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USPTO Update on the Global Trademark Form

February 15, 2010 by · Comments Off
Filed under: trademark, Trademark Articles 

Author:  Emily S., William & Mary Intern

On September 12, 2009 the U.S. Patent and Trademark Office (USPTO) introduced a new “global trademark form.” This new electronic filing option allows virtually all trademark documents to be filed online; only in very rare cases does any trademark document need to be submitted as a paper copy. The enlarged Trademark Electronic Application System (TEAS) now includes 50 domestic forms; 25 of which require information to be entered in structured fields and the other 25 of which offer a “global form” approach, which allows text to be entered free-form or as JPG/PDF attachments. The USPTO strongly encourages practitioners to examine these flexible electronic options prior to filing any paper forms. In addition to domestic trademark forms, the website also offers three forms for international filings under the Madrid Protocol.

So how does this global form work? The global form option allows trademark documents which no structured data TEAS form is currently available to be filed electronically. To identify the type of document being filed, the user selects from a drop-down list and then enters free-form text or uploads a document in the JPG/PDF format that already contains the needed information. The USPTO plans to enhance the global form interface in the future, so that users will be able to directly access these forms rather than using drop-down menus within each category heading.

The global form approach to trademark filing provides nearly all of the same benefits offered by a standard TEAS filing. E-mail confirmation of receipt of the form is almost instantaneous, as is the entry of the appropriate prosecution history label into the USPTO database and the routing of the form to the correct work unit. The global form does not, however, allow automated upload of the information into the USPTO database, which serves to eliminate all data-entry errors. The USPTO therefore views the global form as an interim step to expanding its electronic filing offerings.

The complete listing of the new global form offerings, by category, is included below with links to their place on the TEAS webpage. In addition, the USPTO may soon add two further forms—“Petition for Denial of Certification of an International Application” and “Request for Replacement of a Registration Certificate.” Any suggestions for additional forms to be included should be sent to eComments@uspto.gov.

Intent-to-Use (ITU) Matters

Response to ITU Office action

Post-Registration Matters

Response to Post-Registration Office Action
Petition for Post-Registration Matter
Surrender of Registration for Cancellation
Declaration of Use and Excusable Nonuse under Section 71
Section 12( c) Affidavit
Request to Divide Registration

Madrid Filings

Replacement request
Transformation request

Petitions for Similar Matters

2.146 Petition to the Director
2.66 Due Diligence Petition
Petition to Amend Basis for Post-Publication
Petition for Post-Registration matter
Letter of Protest
Petition to Make Special
Request to Make Special
Response to Petition to Revive Deficiency Letter
Response to Petition to Director Inquiry Letter

Miscellaneous

Request to Divide Application
Replacement of Attorney of Record with Another Already-Appointed Attorney
Substitute Certification Mark
Substitute Collective Membership Mark
Substitute Collective Trademark/Service Mark
Substitute Trademark/Service Mark Application
Change of Domestic Representative’s Address
Request to Withdraw as Domestic Representative