Chapter 400 Processing Documents and Fees
Upon receipt in the USPTO, trademark applications filed under §1 or §44 of the Trademark Act are given a date of receipt and reviewed for compliance with the minimum requirements for receipt of a filing date (seeTMEP §202). SeeTMEP §§201 and1904.01(b)regarding the filing date of applications under §66(a) of the Trademark Act.
If an application meets the minimum filing date requirements of37 C.F.R. §2.21, it is given a filing date and serial number.
When an application is filed electronically, the United States Patent and Trademark Office (“USPTO”) generally receives it within seconds after filing, and TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the application filing date, and may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the application data and general processing information. No paper filing receipt is sent by the USPTO to the applicant.
The applicant or its attorney should immediately review the summary of the application data for accuracy. If the information in the summary is inconsistent with the information transmitted by applicant, the applicant or attorney should notify the USPTO by sending an e-mail message to TEAS@uspto.gov.
Section 66(a) Applications
For §66(a) applications (i.e., requests for extensions of protection of international registrations to the United States), the USPTO sends a filing receipt to the correspondence address of record. SeeTMEP §§1904.02(i) regarding the correspondence address in §66(a) applications.
The applicant or its attorney should review the information on the filing receipt for accuracy and notify the USPTO in writing of any discrepancy. A request for correction of a filing receipt should be sent via e-mail toTMfilingreceipt@uspto.gov or mailed to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451. SeeTMEP §1904.13(b) regarding corrections to §66(a) applications.
Paper Applications Under §1 or §44
For paper applications under §1 or §44 of the Trademark Act, after an application has been given a filing date, a filing receipt is sent to the applicant. The filing receipt identifies the following: (1) the mark; (2) the application serial number, filing date, and register; (3) the type of mark (e.g., trademark or service mark); (4) the statutory basis or bases for filing, if provided at the time of filing; (5) the identification of goods and/or services, and international classes; (6) information about the applicant (and the applicant’s attorney, if provided); and (7) the address to be used for correspondence. SeeTMEP §201 for further information about what constitutes the filing date.
Corrections and Voluntary Amendments
The applicant or attorney should review the information on the filing receipt for accuracy and notify the USPTO in writing of any discrepancy. A request for correction of a filing receipt should be be sent via e-mail toTMfilingreceipt@uspto.gov or mailed to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451.
An applicant should send a request for correction of a filing receiptonly if the information on the filing receipt is inconsistent with the information in the application as filed. If the applicant made an error in the application, the applicant should file an amendment rather than a request for correction of the filing receipt. An electronic form for filing voluntary amendments is available through TEAS.
Note: A voluntary amendment submitted before the application is assigned to an examining attorney is placed in the record when filed and will be considered during initial examination; it will not be examined out of order.SeeTMEP §702.01. The mere filing of a voluntary amendment does not guarantee that the amendment will be accepted. For example, the examining attorney will not accept a voluntary amendment that materially alters the mark shown on the original drawing, or that expands the scope of the goods and/or services in the original application. See .TMEP §807.17regarding the processing of unacceptable amendments to drawings andTMEP §1402.15 regarding the processing of unacceptable amendments to identifications. In addition, an application that does not meet the minimum requirements for receipt of a filing date at the time of filing may not be perfected by filing a voluntary amendment prior to examination. SeeTMEP §§204-204.03 regarding applications that do not meet minimum filing requirements,TMEP §702.01regarding the order of examination,TMEP §807.14 regarding material alteration of a mark, andTMEP §§1402.07–1402.07(e)regarding the scope of the identification of goods and/or services for purposes of amendment.
Each application for registration is assigned an eight-digit serial number comprised of a two-digit series code and six additional numbers assigned by order of filing within the series code. To ensure that a communication is correctly routed within the USPTO, applicants must include the entire eight-digit number on all communications related to a particular application.
As a general rule, the serial numbers of applications filed prior to the 1905 - 1920 Acts are preceded by the series code “70.”
Applications filed under the 1905 - 1920 Acts (i.e., applications filed through July 4, 1947) were preceded by the series code “71.” The last serial number was 526,346.
As of July 5, 1947, applications were filed under the 1946 Act, beginning with number 526,500 and running through number 700,943 (preceded by the series code “71”).
On January 3, 1956, a new series of serial numbers preceded by the series code “72” was started, after a change in record-keeping methods. This series ran through number 467,233, issued on August 31, 1973.
A new series of serial numbers preceded by the series code “73” began with applications filed on September 4, 1973, which was the first day of receipt of mail after the adoption of the international classification of goods and services as of September 1, 1973 (see TMEP §1401.02).
A new series of serial numbers preceded by the series code “74” began with applications filed on November 16, 1989, the date on which the Trademark Law Revision Act of 1988 took effect.
A new series of serial numbers preceded by the series code “75” began with applications filed on October 1, 1995.
A new series of serial numbers preceded by the series code “76” began with applications filed on March 20, 2000.
A series of serial numbers preceded by the series code “77” began September 14, 2006 for applications filed through TEAS on or after that date.
A series of serial numbers preceded by the series code “78” was used for TEAS applications filed prior to September 14, 2006.
A series of serial numbers preceded by the series code “85” began April 1, 2010 for all applications filed through TEAS on or after that date.
A series of serial numbers preceded by the series code “86” began July 1, 2013 for all applications filed through TEAS on or after that date.
A series of serial numbers preceded by the series code “87” began April 13, 2016 for all applications filed through TEAS on or after that date.
Effective November 2, 2003, a series of serial numbers preceded by the series code “79” is used for requests for extension of protection of international registrations to the United States under §66(a) of the Trademark Act.
A range of serial numbers, beginning with number 975,000, is used for applications that are created through the “dividing” of an application (see TMEP §§1110–1110.11(a)).
For applications filed through TEAS, the data provided by the applicant is loaded directly into the Trademark database.
For applications filed on paper, the application documents are scanned and the data is manually entered into the Trademark database, which is used by USPTO employees to obtain information about the location, status, prosecution history, ownership, and correspondence address for applications and registrations. This information is available to the public through the Trademark Status and Document Retrieval (“TSDR”) database, available on the USPTO’s website athttp://tsdr.uspto.gov/.
The USPTO maintains an electronic record of all applications, containing all incoming and outgoing documents, which comprises the official administrative record. SeeTMEP §402; see generally15 U.S.C §1071(a)(4);5 U.S.C. §§556,557,706.
For paper applications, the USPTO scans all incoming documents and creates an electronic record. The examining attorney works from the electronic record, and outgoing communications are put into the electronic record only.
All applications are electronically routed to the law offices.
The USPTO maintains TICRS, an internal database that includes images of the contents of trademark application and registration records. Members of the public who visit the USPTO’s Public Search Facility may use TICRS, free of charge, and can print images of documents from TICRS for a fee.
The public may also view and print images of the contents of trademark application and registration records through the Trademark Status and Document Retrieval (“TSDR”) portal on the USPTO website athttp://tsdr.uspto.gov/. Electronic images of Trademark Trial and Appeal Board proceeding records are also available on the USPTO website athttp://ttabvue.uspto.gov/ttabvue/. TSDR and TTABVUE are available 24 hours a day, seven days a week, free of charge.
Effective April 12, 2004, the USPTO no longer creates paper file copies of certain trademark-related documents that are submitted to the USPTO in electronic format. Furthermore, the USPTO does not generate paper copies of certain trademark documents that the USPTO creates, except for copies that are sent to recipients by mail. See New USPTO Policies Regarding (1) Generation of Paper Copies of Trademark-Related Documents and (2) Public Access to Existing Paper Copies of Trademark-Related Documents (TMOG Apr. 6, 2004), athttp://www.uspto.gov/web/offices/com/sol/og/2004/week14/pattmcp.htm.
All these documents can be viewed through TICRS and TSDR.
The USPTO still provides certified paper copies of all trademark documents, upon request and payment of the appropriate fee. SeeTMEP §111.
If an email notification of the issuance of an Office action or other notice sent to the designated primary email correspondence address of record is returned as undeliverable, the time for response will not be extended. Similarly, if an Office action or notice was mailed to the postal correspondence address of record, but was returned as undeliverable, the time for response will not be reset. SeeTMEP §§609–609.01(a) regarding the correspondence address.
If the USPTO either entered the correspondence address of record incorrectly or failed to enter a properly authorized request to change the correspondence address filed before the date on which the action or notice was issued, the USPTO may reissue the Office action or notice with a new response period if the applicant or registrant notifies the USPTO prior to the expiration of any deadline for response.
The transmittal of correspondence or a response on letterhead bearing a new address is not an appropriate means of providing notice of, or making, changes to the correspondence address of record. A request to change the correspondence address, signed in accordance with§ 2.193(e)(9), must be promptly filed.37 C.F.R §2.18(b).SeeTMEP §§609.02609.02(f). To expedite processing, notices of change of correspondence address (including changes of email correspondence address) should be filed through TEAS.SeeTMEP §609.02(b).
Trademark applicants and registrants should monitor the status of their applications or registrations every six months between the filing of an application or of a maintenance submission and the issuance of a registration or notice of acceptance. SeeTMEP §§108.03 and1705.05 regarding due diligence and the duty to monitor status. Should the status inquiry reveal that a document is lost, that no action has been taken regarding correspondence that was submitted, or that some other problem exists, the applicant or registrant must promptly request corrective action in accordance with the procedures inTMEP §1705.05. Failure to act diligently and follow up with appropriate action may result in denial of the requested relief.
SeeTMEP §717 regarding reissuing Office actions andTMEP §717.01 regarding outgoing correspondence returned as undeliverable. SeeTMEP §§1712–1712.02(b)(iii) regarding requesting reinstatement of applications and registrations abandoned due to USPTO error.
37 C.F.R. Documents not returnable.
Except as provided in §2.27(e), documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed.
Documents filed in the USPTO by the applicant or registrant become part of the official record and will not be returned or removed. 37 C.F.R. §2.25. If, for a valid reason, the applicant does not want certain information to become part of a public record, the applicant should consider options such as redacting confidential portions of documents prior to their submission. SeeTMEP §§1702,1705–1705.09, and1708 regarding filing a petition to the Director to waive the rule regarding removal of documents from the official record.
Documents ordered to be filed under seal pursuant to a protective order issued by a court or by the TTAB, pursuant to37 C.F.R. §2.27(e), are not made part of the record available to the public.
The USPTO will furnish copies of the contents of trademark application, registration, and TTAB proceeding records upon request and payment of the required fee. SeeTMEP §111.
37 C.F.R. Methods of payment.
- (a) All payments of money required in trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
- (b) Payments of money required for trademark fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
SeeTMEP §1903.02 regarding payment of fees to the IB through the USPTO.
Under37 C.F.R. §2.207, the USPTO accepts payment of fees by credit card, subject to actual collection of the fee.
Any payment of a fee by credit card must be in writing. 37 C.F.R. §2.191. A form for authorizing charges to a credit card can be accessed through TEAS for all filings for which a filing fee is required. Parties who file on paper can download a Credit Card Payment Form (PTO-2038) from the USPTO’s website athttp://www.uspto.gov/. The USPTO does not put the Credit Card Payment Form in application or registration records.
A party is not required to use the USPTO’s Credit Card Payment Form when paying a fee by credit card. However, if a party provides a credit card charge authorization in another form or document (e.g., in the body of an application, cover letter, response to an Office action, or other correspondence relating to a trademark application or registration), the credit card information becomes part of the public record. See37 C.F.R. §2.207(b).
All credit card authorizations must include: (1) a valid credit card number; (2) a valid expiration date; (3) the name of the cardholder with the cardholder’s signature and the date; (4) a billing address, including zip code; (5) a description and purpose of the payment; and (6) a specific payment amount. SeeTMEP §§611.01–611.01(c) regarding signature of documents.
If a Credit Card Payment Form or other document authorizing the USPTO to charge a fee to a credit card does not contain the information necessary to charge the fee to the credit card, the form will be returned and the fee will not be processed. USPTO employees will not accept oral instructions to complete the Credit Card Payment Form or otherwise charge a fee to a credit card.
The USPTO will only accept an authorization to charge a fee in a specific dollar amount to a credit card.
The USPTO currently accepts charges to the following credit cards: AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.
Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. 37 C.F.R. §2.209(a).
See notice at 65 Fed. Reg. 33452 (May 24, 2000), 1235 TMOG 38 (June 13, 2000).
SeeTMEP §405.06 regarding credit card authorizations that are refused or charged back by a financial institution.
Trademark Rule 2.207(a),37 C.F.R. §2.207(a), provides that:
All payments of money required in trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made….
It is the practice of the USPTO to accept, as “conditional” payment of a fee, a signed uncertified check (e.g., a personal check). If an uncertified check clears, then the USPTO considers the fee paid as of the date it received the check.
However, if such a check is returned unpaid, then the fee remains unpaid, and the document that included the returned check is processed as though the fee had been omitted. SeeIn re Paulsen, 35 USPQ2d 1638, 1639 (Comm’r Pats. 1995). SeeTMEP §405.06 for further information about processing checks that are returned unpaid.
Under37 C.F.R. §2.6(b)(10), there is a processing fee for any check returned to the USPTO unpaid.
- (a) For the convenience of attorneys, and the general public in paying any fees due, in ordering copies of records, or services offered by the Office, deposit accounts may be established in the Office. A minimum deposit of $1,000 is required for paying any fees due or in ordering any services offered by the Office. The Office will issue a deposit account statement at the end of each month. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit. An amount sufficient to cover all fees, copies, or services requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 2.6(b)(11)) will be assessed for each month that the balance at the end of the month is below $1,000.
- (b) A general authorization to charge all fees, or only certain fees to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular document filed. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
- (c) A deposit account holder may replenish the deposit account by submitting a payment to the Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
- (1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
- (i) Name of the Bank, which is Treas NYC (Treasury New York City);
- (ii) Bank Routing Code, which is 021030004;
- (iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
- (iv) The deposit account holder’s company name and deposit account number.
- (2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet Web site (http://www.uspto.gov).
- (3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
A party cannot charge a fee to a deposit account unless he or she has prior authorization to do so. The Office of Finance maintains a list of persons authorized to request transactions by deposit account. The USPTO will not charge a fee to a deposit account unless the person requesting the charge appears on the authorized list or files a proper request to have his or her name added to the authorized list.
An authorization to charge a fee to a deposit account must be made in a written document signed and submitted by an authorized person. It cannot be entered by examiner’s amendment unless the record contains a written authorization signed and submitted by an authorized person. If there is no written authorization already in the record, the applicant may fax or e-mail the authorization to the examining attorney.
If an applicant submits an authorization to charge a filing fee to a deposit account that has insufficient funds to cover the fee, the applicant has not paid the fee.
If a deposit account has insufficient funds to cover an authorization to charge the initial filing fee for an application for registration, the USPTO will not grant a filing date to the application. 37 C.F.R. §2.21(a)(5). SeeTMEP §204.01.
When a deposit account contains insufficient funds to cover a fee that has been authorized, the USPTO notifies the party who filed the authorization of the fee deficiency. If the fee in question is statutory (e.g., the filing fee for a notice of appeal, statement of use, or request for extension of time to file a statement of use), the fee deficiency must be cured before the expiration of the statutory filing period. If the deadline for filing the fee is not set by statute, the party who filed the authorization may cure the fee deficiency within the set period for response to the Office action.
A showing that the deposit account contained sufficient funds on the date on which the authorization was first filed, as opposed to the date on which USPTO personnel attempted to charge the fee, will not cure the fee deficiency. Trademark Rule 2.208(a),37 C.F.R. §2.208(a), clearly requires that sufficient funds to cover all outstanding charge authorizations be on deposit at all times. The funds must be available in the account at the time the authorization is presented for debiting.
SeeTMEP §1104.10(b)(vii) regarding fee deficiencies in amendments to allege use,TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use,TMEP §1109.15(a) regarding fee deficiencies in statements of use,TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, andTMEP §1606.05(c) regarding fee deficiencies in renewal applications.
- (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a trademark application, appeal or other trademark filing for which a fee was paid, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
- (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§2.208(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
Under35 U.S.C. §42(d) and37 C.F.R. §2.209, only money paid by mistake or in excess (when a fee is not required by statute or rule, or is not required in the amount paid) may be refunded. A mere change of purpose after the payment of money does not entitle a party to a refund. For example, if a party deletes a class from an application, or decides that it no longer wishes to go forward with an application or appeal, the party is not entitled to a refund.
If an examining attorney or other USPTO employee erroneously requires a fee, the USPTO will refund the fee submitted in response to the erroneous requirement.
The USPTO will refund the filing fee for an application that is denied a filing date, or a filing fee that is untimely (e.g., the fee for a statement of use or request for an extension of time to file a statement of use filed after expiration of the statutory filing period). However, after the USPTO has processed an application or other document, the USPTO will not refund the filing fee. The USPTO will not refund an application filing fee when registration is refused, nor will it refund a fee when a timely filed document (such as a statement of use under15 U.S.C. §1051(d) or affidavit of use or excusable nonuse under 15 U.S.C. §1058) is rejected for failure to meet the requirements of the statute and rules.
Refund requests should be sent to Mail Stop 16, Director of the USPTO, P.O. Box 1450, Alexandria, VA 22313-1450.
When a USPTO employee determines that a refund is appropriate, the employee must submit the request to the TMFinance e-mail box with the information necessary for processing the refund.
The Electronic Funds Transfer (“EFT”) payment method allows customers to send a payment over the Internet as easily as writing a check. In general, the Automated Clearing House performs EFT transactions through the Federal Reserve system. The customer must establish a User ID and Password. For further information, seehttp://www.uspto.gov/teas/payment.htm.
If a check is returned unpaid, or an EFT or credit card is refused or charged back by a financial institution, the document that accompanied the payment is processed as though the fee had been omitted. SeeIn re Paulsen, 35 USPQ2d 1638, 1639 (Comm’r Pats. 1995). If the document included an authorization to charge deficient fees to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, the USPTO charges the fee in question, together with a fee for processing the payment that was refused, to the deposit account.
If the document was not accompanied by an authorization to charge fees to a deposit account, the USPTO notifies the party who filed the document of the fee deficiency in a written action. If the deadline for filing the fee is not set by statute, the fee may be resubmitted within the period set for response to the Office action. If the fee in question is statutory (e.g., a filing fee for an appeal, statement of use, or request for extension of time to file a statement of use), the fee must be resubmitted before the expiration of the statutory filing period.
Under37 C.F.R. §2.6(b)(10), there is a fee for processing any payment that is refused or charged back by a financial institution. This fee covers the work done by USPTO personnel in processing the payment that is refused or charged back. The requirement for submission of the processing fee is strictly enforced. The USPTO will not approve a pending application for publication or registration, or take any other requested action in an application or registration, until all outstanding fees, including the processing fee, have been paid. Any request for waiver of this processing fee should be referred to the Office of the Deputy Commissioner for Trademark Examination Policy.
SeeTMEP §§202.03(a) and202.03(a)(i) regarding the processing of an application in which the application filing fee payment is refused or charged back by a financial institution,TMEP §1104.10(b)(vii) regarding fee deficiencies in amendments to allege use,TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use,TMEP §1109.15(a) regarding fee deficiencies in statements of use,TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, andTMEP §1606.05(c) regarding fee deficiencies in renewal applications.