819.02    Additional Requirements for a TEAS Plus Application

819.02(a)    Receipt of Communications by E-Mail

Trademark Rule 2.22(a)(6), 37 C.F.R. §2.22(a)(6), requires that the application as filed include an e-mail address for correspondence and an authorization for the USPTO to send correspondence concerning the application to the applicant by e-mail.  Trademark Rule 2.22(b)(2), 37 C.F.R. §2.22(b)(2), requires that the applicant maintain a valid e-mail correspondence address, and continue to receive correspondence by e-mail throughout the pendency of the application.

The additional fee will be required if the TEAS Plus applicant (or the applicant’s qualified practitioner) files a change of correspondence address, and the correspondence address change does not authorize e-mail correspondence, or if the applicant has a change in e-mail address, but does not notify the USPTO of the new e-mail address, thereby causing correspondence from the USPTO to be undeliverable.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  The applicant cannot avoid paying the fee by subsequently agreeing to authorize e-mail correspondence.

When issuing a nonfinal action on a TEAS Plus application, the examining attorney will include a reminder that the applicant must maintain a valid e-mail correspondence address, and continue to accept correspondence from the USPTO via e-mail throughout the examination process in order to avoid the additional fee.  If the applicant files a request to change the correspondence address that does not authorize e-mail correspondence, the requirement for payment of the additional fee will be made final, assuming that the application is otherwise in condition for final refusal.

819.02(b)    Additional Documents That Must be Filed Through TEAS

In addition to the filing requirements set forth in 37 C.F.R. §2.22 (see TMEP §§819.01–819.01(q)), to maintain TEAS Plus status, the applicant must file the following documents through TEAS:

  • Responses to Office actions (except notices of appeal);
  • Requests for reconsideration of final Office actions;
  • Requests to change the correspondence address and/or owner’s address;
  • Appointment and/or revocation of power of attorney;
  • Appointment and/or revocation of domestic representative;
  • Voluntary amendments;
  • Amendments to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c);
  • Statements of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
  • Requests for extensions of time to file a statement of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d); and
  • Requests to delete a §1(b) basis in a multiple-basis application.

37 C.F.R. §2.22(b)(1).  The additional fee(s) for each class of goods/services will be required if the applicant files any of these documents on paper.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).

When issuing a nonfinal action on a TEAS Plus application, the examining attorney will require that the applicant either:  (1) respond through TEAS (or by examiner’s amendment, if appropriate); or (2) if responding on paper, include the additional TEAS Plus processing fee with the response.  If the applicant files a paper response without the required fee, the requirement for payment of the fee will be made final, assuming that the application is otherwise in condition for final refusal.  See TMEP §§714–714.06 regarding procedures for issuing a final refusal.

If a Notice of Allowance has issued and the applicant files a statement of use or request for an extension of time to file a statement of use on paper, or any other document that is required to be filed electronically between issuance of the Notice of Allowance and filing of the statement of use, the ITU Unit staff will send a letter requiring payment of the additional fee.  If the applicant fails to submit the fee, the examining attorney will require payment of the fee during examination of the statement of use.