820    TEAS RF (Reduced Fee)

TEAS RF permits an applicant who files an application for registration of a trademark, service mark, certification mark, collective membership mark, or collective trademark based on §1 or §44 of the Trademark Act, 15 U.S.C. §1051   or §1126, to pay a reduced filing fee of $275 per class, if the applicant:

  • (1) Files an application, using the USPTO’s TEAS RF application, available at http://www.uspto.gov;
  • (2) Agrees to file certain communications regarding the application, such as responses to Office actions, through TEAS; and
  • (3) Agrees to receive communications concerning the application by e-mail.

The requirements that must be met at the time of filing are set forth in 37 C.F.R. §2.23(a)  ( see TMEP §820.01) and the requirements that must be met during the pendency of the application are set forth in 37 C.F.R. §2.23(b)  ( see TMEP §§820.02 – 820.02(b)). If an applicant files a TEAS RF application but does not meet these requirements, the applicant will be required to pay an additional TEAS RF processing fee of $125 per class. 37 C.F.R. §2.6(a)(1)(v). See TMEP §820.04.

820.01    TEAS RF Filing Requirements

To be eligible for the reduced fee, the TEAS RF application must include an e-mail correspondence address and authorization for the USPTO to send correspondence to the applicant by e-mail. 37 C.F.R. §2.23(a).

If the application includes an e-mail address and an authorization for the USPTO to send correspondence by e-mail, no additional fee will be required if the e-mail address is amended to correct an inadvertent error in the address prior to correspondence from the Office being returned as undeliverable, as long as the amendment is filed through TEAS or entered by examiner’s amendment, or if the applicant changes the e-mail address via TEAS ( see TMEP §609.02(b)).

820.02    Additional Requirements for a TEAS RF Application

820.02(a)    Receipt of Communications by E-Mail

Trademark Rule 2.23(b)(2), 37 C.F.R. §2.23(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.

If the TEAS RF 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, the applicant will be required to pay an additional processing fee. 37 C.F.R. §§2.6(a)(1)(v)  and 2.23(c). The applicant cannot avoid paying the fee by subsequently agreeing to authorize e-mail correspondence.

When issuing a nonfinal action on a TEAS RF 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.

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

To maintain TEAS RF status, the applicant must also 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. §2.23(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)  and 2.23(c).

When issuing a nonfinal action on a TEAS RF 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 RF 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.

820.03    Adding a Class During Examination

The fee to add a class to a TEAS RF application during examination is the reduced TEAS RF fee, as long as the amendment is filed through TEAS or entered by examiner’s amendment and the applicant has not lost TEAS RF status for some other reason. See TMEP §1403.02(c).

If the applicant adds a class after losing TEAS RF status, the applicant must pay the regular TEAS fee if the fee is paid through TEAS or by examiner’s amendment, or the paper fee if the class is added by a paper amendment.

820.04    Procedures for Payment of TEAS RF Processing Fee Per Class

A TEAS RF applicant must pay a processing fee per class if: (1) the initial application does not meet the requirements of 37 C.F.R. §2.23(a); (2) the applicant files one of the documents listed in 37 C.F.R. §2.23(b)(1)  on paper; or (3) the applicant files a notice of change of correspondence address that does not authorize e-mail correspondence. 37 C.F.R. §§2.6(a)(1)(v), 2.23(b)(2), (c). The application will retain its original filing date, assuming the initial application met the minimum filing requirements that are mandatory for all applications under 37 C.F.R. §2.21(a). It will subsequently be examined as a regular TEAS application.

Processing Fee Must Be Paid for All Active Classes. If the applicant loses TEAS RF status, the applicant must pay the TEAS RF processing fee per class for all classes that are in the application at the time the examining attorney issues the Office action requiring the TEAS RF processing fee.

Example: The original application is for two classes. Prior to assignment of the application to an examining attorney, the applicant files an unacceptable amendment to the mark via paper correspondence. In addition to addressing the unacceptable amendment, the first Office action will include a requirement for the processing fee for the original two classes and any additional classes that might be added, provided such classes are within the scope of the original identification.

Examiner’s Amendment. If all remaining issues can be handled through a telephone or e-mail conversation with the applicant or the applicant’s qualified practitioner, and a deposit account is used to pay the fee or an authorization to charge the fee to a credit card is submitted by fax, the fee may be collected by examiner’s amendment. However, a fee cannot be charged to a deposit account by examiner’s amendment unless the record contains a written authorization, signed by someone who is authorized to charge fees to the account. If there is no written authorization in the record, the applicant may submit the authorization by fax or e-mail. See TMEP §405.03 regarding deposit accounts.

Combined Examiner’s Amendment/Priority Action. If all of the issues except payment of the processing fee are resolved by a telephone or e-mail conversation with the applicant or the applicant’s qualified practitioner, the examining attorney may issue a combined Examiner’s Amendment/Priority Action ( TMEP §708.05) to enter the amendment(s) and require payment of the TEAS RF processing fee.

No Partial Refusal. If the applicant loses TEAS RF status, the requirement for the TEAS RF processing fee applies to the entire application, so an Office action requiring the processing fee can never be a partial refusal.

Paying the Processing Fee Through TEAS. To pay the TEAS RF processing fee through TEAS, the applicant may use the TEAS Response to Office Action ("ROA") form or the TEAS Voluntary Amendment Not in Response to USPTO Office Action/Letter form. If the requirement for the processing fee is issued in the first action, TEAS will not allow the applicant to use the TEAS ROA form to pay the fee until 48-72 hours after the Office action is entered into the Trademark database.