819    TEAS Plus

TEAS Plus permits an applicant who files an application for registration of a trademark or service mark based on §1 or §44 of the Trademark Act, 15 U.S.C. §1051   or §1126, to pay a reduced filing fee of $225 per class, if the applicant:

  • (1) Files a complete application, using the USPTO’s TEAS Plus form, 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. §2.22(a)  (see TMEP §§819.01–819.01(q)), and the requirements that must be met during the pendency of the application are set forth in 37 C.F.R. §2.22(b)  (see TMEP §§819.02–819.02(b)).  If an applicant files a TEAS Plus application but does not meet these requirements, the applicant will be required to pay an additional TEAS Plus processing fee of $125 per class.  37 C.F.R. §2.6(a)(1)(v).   See TMEP §819.04.

819.01    TEAS Plus Filing Requirements

To be eligible for the reduced fee, a TEAS Plus application must request registration of a trademark or service mark on the Principal Register, and must include the following at the time of filing:

  • Applicant’s Name and Address;
  • Applicant’s Legal Entity and Citizenship (or state or country of incorporation of a juristic applicant);
  • Paper Correspondence Address.  A name and address for paper correspondence;
  • E-mail Correspondence Address and Authorization.  An e-mail correspondence address and authorization for the USPTO to send correspondence to the applicant by e-mail;
  • Filing Basis or Bases.  One or more bases for filing, and all requirements of 37 C.F.R. §2.34  for each basis;
  • Identification and Classification of Goods/Services.  A correctly classified and definite identification of goods/services taken directly from the USPTO’s Acceptable Identification of Goods and Services Manual ("USPTO ID Manual"), available through the TEAS Plus form;
  • Filing Fee.  A filing fee per class for all classes listed in the application;
  • Signed Verification.  A verified statement, dated and signed by a properly authorized person;
  • Drawing.  A clear drawing of the mark comprising either:  (1) a claim of standard characters and the mark, typed in the appropriate TEAS Plus field; or (2) a digitized image of a mark in special form.  If the mark includes color, the digitized image must show the mark in color;
  • Color Claim and Description of Color(s).  If the mark includes color, a claim that the color(s) is a feature of the mark; and a statement in the "Description of the Mark" field naming the color(s) and describing where the color(s) appears on the mark;
  • Description of Mark.  If the mark is not in standard characters, a description of the mark;
  • Prior Registrations for Same Mark.  If the applicant owns one or more registrations for the same mark, and the last listed owner(s) of the prior registration(s) differs from the owner of the application, a claim of ownership of the registration(s), identified by the U.S. registration number(s);
  • Translation.  If the mark includes foreign wording, a translation of that wording;
  • Transliteration of Non-Latin Characters.  If the mark includes non-Latin characters, a transliteration of those characters;
  • Consent to Registration of Name or Portrait.  If the mark includes an individual’s name or portrait, either:  (1) a statement that identifies the living individual whose name or likeness the mark comprises, and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual;
  • Concurrent Use.  If the application is a concurrent use application, the application must meet the requirements of 37 C.F.R. §2.42;
  • Multiple-Class Applications.  If the application contains goods/services in more than one class, the application must meet the requirements of 37 C.F.R. §2.86; and
  • Section 44 Applications.  In a §44 application, the scope of the goods/services covered by the §44 basis may not exceed the scope of the goods/services in the foreign application or registration.

37 C.F.R. §2.22(a).

As long as the applicant has made a reasonable attempt to supply the required information in the initial application, the applicant has met the TEAS Plus filing requirements and generally will not lose TEAS Plus status if the information is later amended, either in response to an examining attorney’s requirement or on the applicant’s initiative, as long as the amendment is filed through TEAS or entered by examiner’s amendment.  See TMEP §819.01(a)–(q) for further guidance as to when the additional fee will be required in particular situations.

If an applicant files a TEAS Plus application but does not meet these requirements, the examining attorney must issue an Office action requiring the applicant to pay the additional TEAS Plus processing fee.   See 37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  If a required field is filled with irrelevant or clearly inappropriate information, the required element will be considered omitted (e.g., if the notation "???" is entered as the translation in a mark that includes foreign wording).

When an application loses TEAS Plus status, the application will be examined as a regular TEAS application.  The application will retain its original filing date, assuming that the initial application met the minimum filing requirements required of all applications, which are set forth in 37 C.F.R. §2.21.  The examining attorney must perform the proper transaction to change the application status in the USPTO’s automated systems.

819.01(a)    Type of Mark

TEAS Plus is available only to applicants seeking registration of a trademark or service mark on the Principal Register under §1 and/or §44 of the Trademark Act.  Applications for certification marks, collective marks, and collective membership marks and applications for registration on the Supplemental Register cannot be filed using TEAS Plus.  37 C.F.R. §2.22(d).

The additional fee will be required if the mark in a TEAS Plus application is amended to a collective, collective membership, or certification mark.

No additional fee will be required if the application is amended from the Principal to the Supplemental Register, as long as the amendment is filed through TEAS or entered by examiner’s amendment.

TEAS Plus does not apply to applications filed under §66(a) of the Act, 15 U.S.C. §1141f(a),  because they cannot be filed through TEAS.  

819.01(b)    Applicant’s Name and Address

The application must include the applicant’s name and address.  37 C.F.R. §2.22(a)(1).  The additional fee will be required if this information is omitted.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).

If the application includes this information, no additional fee will be required if the application is amended to clarify the information or to correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment.

819.01(c)    Applicant’s Legal Entity and Citizenship

The application must include the applicant’s legal entity.  37 C.F.R. §2.22(a)(2).  The application must also set forth the citizenship of an individual applicant, or the state or country of incorporation or organization of a juristic applicant.  37 C.F.R. §2.22(a)(3).  The additional fee will be required if this information is omitted.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).

If the application includes this information, no additional fee will be required if the application is amended to clarify the information or correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment.

Trademark Rule 2.22(a)(4) requires that where the applicant is a partnership, the application must include the names and citizenship of the applicant’s general partners. Note: The requirement for the names and citizenship of the general partners applies only to domestic partnerships.  37 C.F.R. §2.32(a)(3)(iii); TMEP §803.04.

819.01(d)    Name and Address for Paper Correspondence

The application must include a name and address to which the USPTO can send paper correspondence.  37 C.F.R. §2.22(a)(5).  The additional fee will be required if this information is omitted.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  The application must also include an e-mail address and an authorization for the USPTO to send correspondence by e-mail.  37 C.F.R. §2.22(a)(6); TMEP §819.01(e).  The USPTO will send most official correspondence to the applicant by e-mail, but a paper correspondence address is also required.

If the application includes this information, the applicant will not lose TEAS Plus status if the application is amended to clarify the information or to correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment.

819.01(e)    E-mail Address and Authorization for the USPTO to Send Correspondence by E-Mail

The application must include an e-mail address and an authorization for the USPTO to send correspondence by e-mail.  37 C.F.R. §2.22(a)(6).  TEAS Plus will not accept transmission of an application that does not include this information.

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 USPTO 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)).

The additional fee will be required if the applicant or the applicant’s qualified practitioner files a change of correspondence address, and the correspondence address change does not authorize e-mail correspondence.  37 C.F.R. §§2.6(a)(1)(v), 2.22(b)(2), (c); TMEP §819.02(a).  The applicant cannot avoid paying the fee by subsequently agreeing to authorize e-mail correspondence.

819.01(f)    Basis or Bases for Filing

The application must include at least one basis for filing under §1 and/or §44 of the Act that meets the requirements of 37 C.F.R. §2.34.  If more than one basis is set forth, the applicant must comply with the requirements of 37 C.F.R. §2.34  for each asserted basis.  37 C.F.R. §2.22(a)(7).  Otherwise, applicant will lose TEAS Plus status and will be required to pay the TEAS Plus processing fee.

In a multiple-basis application, if the applicant fails to comply with the requirements of 37 C.F.R. §2.34  for one of the bases claimed in the initial application, the applicant cannot avoid paying the TEAS Plus processing fee by deleting the relevant basis.

819.01(f)(i)    Section 1(a) - Use in Commerce

The requirements for establishing a §1(a) basis are set forth in 37 C.F.R. §2.34(a)(1).   See also TMEP §806.01(a).

Specimen(s).  The application must include one specimen showing how the applicant uses the mark in commerce for each class of goods/services.  TEAS Plus will not accept transmission of a §1(a) application that does not include an attachment in the "Specimen" field.  As long as the specimen depicts the mark, no additional fee will be required if registration is refused because the specimen is unacceptable.

An additional fee will be required if the mark on the specimen is materially different from the mark on the drawing.  If the marks on the specimen and the drawing are materially different, the applicant has, in effect, failed to submit a specimen showing use of the mark sought to be registered.  However, no additional fee will be required if the difference between the mark on the specimen and the mark on the drawing is not material.

Example:  The mark on the drawing is ZZZ, and the mark on the specimen is ZEBRAMAX.  Amending the drawing to match the specimen would materially alter the mark on the drawing, so the applicant, in effect, has failed to submit a specimen showing use of the mark on the drawing.  As a result, the applicant loses TEAS Plus status and the examining attorney will require the additional fee.

Example:  The mark on the drawing is ZEBRAMAXX, and the mark on the specimen is ZEBRAMAX.  The mark on the drawing is not a substantially exact representation of the mark on the specimen, but the difference between the marks is not material, so the applicant may amend the drawing, or submit a substitute specimen showing use of the mark on the drawing, without paying the additional fee.

Verified Statement of Use in Commerce.  The application must include a verified statement that the mark is in use in commerce on or in connection with the goods/services listed in the application.  The TEAS Plus form will always include this statement when the applicant asserts a §1(a) basis.  See TMEP §819.01(l) regarding verification.

Dates of Use.  The application must include a date of first use of the mark anywhere and a date of first use of the mark in commerce for each class of goods/services.  When the applicant indicates that it is filing under §1(a), the TEAS Plus form brings up free-text fields in which applicant must type the date of first use anywhere and date of first use in commerce.  TEAS Plus will not accept the transmission unless these fields are completed in the appropriate format (MM/DD/YYYY).  The applicant will not lose TEAS Plus status if the dates are later amended, as long as the amendment is filed through TEAS.

819.01(f)(ii)    Section 1(b) - Intent to Use

A §1(b) application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application.  37 C.F.R. §2.34(a)(2).  The TEAS Plus form will always include this statement when the applicant asserts a §1(b) basis.  See TMEP §819.01(l) regarding verification.

819.01(f)(iii)    Section 44(e) - Foreign Registration  

The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3).   See also TMEP §806.01(d).  The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect.  37 C.F.R. §2.34(a)(3)(ii). If the foreign registration is not in the English language, the applicant must submit a translation. Id.

The following are examples of situations where an additional fee will be required:

  • Foreign Registration Omitted.  TEAS Plus will not accept transmission of a §44(e) application that does not include an attachment in the "Foreign Registration" field.  The additional fee will be required if the applicant attaches inappropriate material, such as a copy of the drawing or of the foreign application.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).
  • Translation of Foreign Registration Omitted.  37 C.F.R. §§2.22(a)(7), 2.34(a)(3)(ii).  The additional fee will be required if the foreign registration is not in the English language and the applicant does not include a translation.
  • Mark Not on Foreign Registration.  37 C.F.R. §§2.22(a)(7), 2.34(a)(3)(ii). The additional fee will be required if the mark shown in the drawing does not appear on the foreign registration.
  • Material Alteration.  37 C.F.R. §§2.22(a)(7), 2.34(a)(3)(ii). The additional fee will be required if the mark on the drawing is a material alteration of the mark on the foreign registration.  However, no additional fee will be required if the difference between the mark on the foreign registration and the mark on the drawing is not material.

Example:  The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH!  The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the additional fee.

Example:  The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES.  Amending the drawing to match the foreign registration would materially alter the mark on the drawing.  The applicant loses TEAS Plus status and must pay the additional fee.

  • Goods/Services Exceed Scope of Foreign Registration.  The additional fee will be required if the examining attorney determines that the goods/services for which registration is sought under §44(e) in the U.S. application exceed the scope of those in the foreign registration.  37 C.F.R. §2.22(a)(8).

Foreign Registration Due to Expire - No Fee Required.  No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues.  Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.34(a)(3)(iii).

Bona Fide Intention to Use the Mark in Commerce.  The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application.  37 C.F.R. §§2.2(l), 2.34(a)(3)(i). The TEAS Plus form will always include this statement when the applicant asserts a §44(e) basis.  See TMEP §819.01(l) regarding verification.

819.01(f)(iv)    Section 44(d)  

The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.34(a)(4).   See also TMEP §806.01(c).

Claim of Priority Filed Within Six Months of Foreign Filing.  The additional fee will be required if the claim of priority is not filed through TEAS within six months of the filing date of the foreign application.  The applicant can submit the priority claim after the filing date of the U.S. application, as long as the priority claim is filed within six months after the foreign filing. 37 C.F.R. §§2.22(a)(7), 2.34(a)(4)(i).

First Filed Application.  The applicant must:  (a) specify the filing date and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.  The additional fee will be required if applicant does not meet this requirement. 37 C.F.R. §§2.22(a)(7), 2.34(a)(4)(i)(B).

Goods/Services Exceed Scope of Foreign Registration.  The additional fee will be required if the examining attorney determines that the goods/services for which registration is sought under §44 in the U.S. application exceed the scope of those in the foreign application or registration.  37 C.F.R. §2.22(a)(8).

Serial Number of Foreign Application Omitted - No Fee Required.  No additional fee is required if a §44(d) filing basis is asserted and the applicant fails to specify the serial number of the foreign application in the initial application, because some applicants will not yet know the serial number of the foreign application at the time of filing in the United States.  However, the serial number must be provided before the application can be approved for publication.  37 C.F.R. §2.34(a)(4)(i)(A).

Bona Fide Intention to Use the Mark in Commerce.  The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application.  37 C.F.R. §§2.2(l), 2.34(a)(4)(ii). The TEAS Plus form will always include this statement when the applicant asserts a §44(d) basis.  See TMEP §819.01(l) regarding verification.

819.01(g)    Identification and Classification of Goods/Services

USPTO ID Manual.  The application must include correctly classified goods and/or services, with an identification of goods/services taken directly from the USPTO ID Manual, available through the TEAS Plus form.  37 C.F.R. §2.22(a)(8).  The TEAS Plus form will automatically provide the correct class for goods/services selected from the USPTO ID Manual, and it will not permit the applicant to edit the "Classification" field.

To enter an identification of goods/services, the TEAS Plus form will instruct the applicant to enter search terms appropriate for the desired goods/services within the identified field on the TEAS Plus form.  The TEAS Plus system will then retrieve relevant entries from the USPTO ID Manual, and the applicant must select one or more of the entries.

Amendment of Identification.  No additional fee is required if the identification of goods/services is acceptable and correctly classified as filed, but is later amended, either in response to a requirement or on the applicant’s initiative.  This is true even if the amendment is unacceptable.

Example:  The goods are identified in the application as "pants" and "shirts," and the applicant files a voluntary amendment to "pants, shirts and dresses."  The examining attorney will refuse the amended identification because "dresses" is beyond the scope of the original identification (37 C.F.R. §2.71(a) ), but no additional fee will be required.

Fill-in-the-Blank Element.  Some USPTO ID Manual entries require the applicant to complete parenthetical information (e.g., "specify the function of the programs").  The display of such entries will include a free-text field so the applicant can type the necessary information, following the instructions within the listing.  If an applicant attempts to use such a listing without completing the required information, TEAS Plus will generate an error message.

No additional fee is required if the identification of goods/services has a fill-in-the-blank element, and the applicant inserts information that is a reasonable attempt to supply the required information in accordance with the instructions, but requires amendment because the inserted information:  (1) sets forth goods/services in another class (e.g., headwear, namely, football helmets (headwear that is clothing is in Class 25, helmets are in Class 9)); (2) is indefinite (e.g., maternity clothing, namely, sportswear); (3) includes indefinite wording from the parenthetical guidance provided for instructional purposes (e.g., "specify," "indicate," "etc." (see TMEP §1402.03(a)); or (4) is inaccurate (see TMEP §1402.05).

However, an additional fee is required if the applicant leaves the fill-in-the-blank element empty, inserts information that is clearly inappropriate for the selected identification, or inserts additional goods/services that are unrelated to the selected identification.  For example, an additional fee is required if the goods/services in the original application are identified as follows:

  • "processed meat, namely, laptop computers;"
  • "bicycle parts, namely, bicycle parts;"
  • "sound recordings featuring music, and sunglasses."

In these situations, the applicant has, in effect, failed to submit an identification from the USPTO ID Manual.  The additional fee is required even if the applicant deletes the unacceptable terminology.

Classification.  Trademark Rule 2.22(a)(8) indicates that if the applicant classified the goods/services in the wrong class in the initial application, the applicant will lose TEAS Plus status and will be required to pay the additional fee for all classes in the application.  However, this is unlikely to occur, because the TEAS Plus form will automatically provide the correct class for goods/services selected from the USPTO ID Manual in the TEAS Plus form, and it will not permit the applicant to edit the "Classification" field.  No additional fee is required if the identification is acceptable and correctly classified as filed, but is amended during examination to add or substitute another class (e.g., amendment from "headwear" in Class 25 to "protective helmets for sports" in Class 9; or amendment from "footwear" in Class 25 to "orthopedic footwear" in Class 10), as long as the amendment is filed through TEAS or entered by examiner’s amendment.  See TMEP §819.03 regarding the addition of classes to a TEAS Plus application.

Section 44 - Goods/Services Exceed Scope of Foreign Registration.  In a §44 application, the additional fee is required if the examining attorney determines that the goods/services for which registration is sought under §44 in the U.S. application exceed the scope of those in the foreign registration.  37 C.F.R. §2.22(a)(8).

819.01(h)    Filing Fee

The application must include a filing fee for each class of goods/services as required by 37 C.F.R. §2.6(a)(1)(iv).  37 C.F.R. §2.22(a)(10). TEAS Plus will not accept transmission of an application that does not include a fee for each class.

See TMEP §819.03 regarding the fee for adding a class during examination.

819.01(i)    Drawing

The application must include a clear drawing of the mark comprising either:  (1) a claim of standard characters and the mark, typed in the appropriate TEAS Plus field; or (2) a digitized image of a mark in special form.  37 C.F.R. §2.22(a)(12).  TEAS Plus requires the applicant to indicate whether the mark is stylized or in standard characters, and will not accept the transmission unless the applicant selects one of these options.  If the applicant claims standard characters, TEAS Plus will not accept transmission unless something has been typed in the appropriate field.  The TEAS Plus system will generate a digitized image of the standard character mark and attach it to the application.

A "clear drawing of the mark" is the same standard used in 37 C.F.R. §2.21(a)(3), which sets forth the requirements for receipt of an application filing date.  Thus, if the TEAS Plus application does not include a clear drawing of the mark, the application will be denied a filing date, in accordance with standard procedures for processing informal applications (see TMEP §§202–202.03 and 204–204.03).  If the application meets the requirement for a clear drawing of the mark, the applicant will not lose TEAS Plus status if the examining attorney requires amendment of the drawing because it does not meet all the requirements of 37 C.F.R. §§2.51–2.53.

Marks That Include Color.  If the mark includes color, the drawing must show the mark in color, or the applicant will lose TEAS Plus status.  37 C.F.R. §2.22(a)(12).  The application must also include a color claim and a statement in the "Description of the Mark" field naming the color(s) and describing where they appear on the mark.  37 C.F.R. §§2.22(a)(14)  and 2.52(b)(1).   See TMEP §819.01(j).

See TMEP §§807.03–807.03(i) for further information about standard character drawings, and TMEP §807.05(c) for the requirements for digitized images.

819.01(j)    Color Claim

As noted above, if the mark includes color, the drawing must show the mark in color.  37 C.F.R. §2.22(a)(12).  In addition, the application must include:  (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the "Description of the Mark" field naming the color(s) and describing where the color(s) appear on the mark.  37 C.F.R. §§2.22(a)(14)  and 2.52(b)(1).  The TEAS Plus form includes a checkbox in the "Color(s) Claimed" field to indicate whether the mark is in color.  When the applicant checks this box, the applicant must name the colors claimed in the text field below the checkbox in the same "Color(s) Claimed" field.  The applicant must then enter the color location statement in a separate "Description of the Mark" field.

As long as the initial application has a color drawing and applicant makes a reasonable attempt to identify the colors claimed in either the "Color(s) Claimed" field or the "Description of the Mark" field, no additional fee is required if the application is amended to clarify the information or to correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment.  For example, applicant will not lose TEAS Plus status if the list of colors claimed is incomplete, or if the mark description does not identify the location of the colors claimed.  However, the additional fee is required if the applicant fails to identify any colors.

See TMEP §§807.07(a)–807.07(a)(ii) for further information about color claims.

819.01(k)    Description of the Mark

If the mark is not in standard characters, the application must include a description of the mark.  37 C.F.R. §§2.22(a)(15)  and 2.37.  The applicant must enter the description in the "Description of the Mark" field of the TEAS Plus application.

TEAS Plus will not accept transmission of an application that does not include either:  (1) a standard character claim; or (2) a description of the mark.  If the applicant makes a good faith effort to describe the mark, no additional fee is required if the description is later amended, either in response to an examining attorney’s requirement or on applicant’s initiative, as long as the amendment is filed through TEAS or entered by examiner’s amendment.  However, the additional fee is required if the applicant enters completely inappropriate information in the "Description of the Mark" field.

If the mark includes color, the "Description of the Mark" field must include a statement naming the color(s) and describing where the color(s) appear on the mark.  See TMEP §819.01(j) regarding color claims.

See TMEP §§808–808.03(g) for further information about descriptions of the mark.

819.01(l)    Verification

The application must include a verified statement that meets the requirements of 37 C.F.R. §2.33, dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to §2.193(e)(1).  37 C.F.R. §2.22(a)(11).  If the application includes a signed verification, no additional fee is required if a substitute verification is later submitted, as long as it is submitted through TEAS.

To provide a signature, the applicant has the option of:  (1) entering any combination of letters, numbers, spaces, and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash ("/") symbols in the TEAS Plus form (37 C.F.R. §2.193(c))(1) ); (2) signing the verified statement in the traditional pen-and-ink manner, and attaching an image file of the signed document to the TEAS Plus form; or (3) completing the application online and e-mailing it to the signatory for electronic signature and automatic return via TEAS to the party who requested the signature.   See TMEP §611.01(c).  If the applicant elects to attach a verified statement with a pen-and-ink signature, the additional fee will be required if the attachment:

  •  fails to include a signature; or
  • does not display the text of the verification and declaration (i.e., only displays a signature).

819.01(m)    Translation and/or Transliteration

If the mark includes non-English wording, the application must include an English translation of that wording.  37 C.F.R. §§2.22(a)(16), 2.32(a)(9).  If the mark includes non-Latin characters, the application must include a transliteration of those characters.  37 C.F.R. §§2.22(a)(17), 2.32(a)(10).  Note that the TEAS Plus form does not prompt the applicant to enter a translation or transliteration, even if either or both would be required.  

If a translation and/or transliteration is omitted, the examining attorney will issue an Office action requiring the additional fee.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  If the initial application includes a translation and/or transliteration, no additional fee is required if the translation/transliteration is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.  However, the additional fee will be required if the translation or transliteration comprises inappropriate material, such as the notation "???."

819.01(n)    Multiple-Class Applications

If the application contains goods/services in more than one class, the application must meet the requirements of 37 C.F.R. §2.86.  37 C.F.R. §2.22(a)(9).  That is, the application must include:

  • (1) An identification of goods/services in each class taken directly from the USPTO ID Manual, available through the TEAS Plus form.  37 C.F.R. §§2.22(a)(8), 2.86(a)(1);  see TMEP §819.01(g);
  • (2) An application filing fee for each class.  37 C.F.R. §§2.6(a)(1)(iv), 2.86(a)(2).  TEAS Plus will not accept transmission of an application that does not include a filing fee for each class; and
  • (3) Either (a) dates of use and one specimen for each class, in an application under §1(a) of the Trademark Act; or (b) a statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with all the goods/services specified in each class, in an application under §1(b) or §44 of the Trademark Act.  37 C.F.R. §2.86(a)(3).

For more information regarding a multiple-class application, see TMEP §§1403-1403.06.

819.01(o)    Consent to Registration of Name or Portrait

If the mark includes a name or portrait that could reasonably be perceived as the name or portrait of a particular living individual (see TMEP §§813–813.01(c), 1206–1206.05), the application must include either:  (1) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual.  37 C.F.R. §2.22(a)(18).

The additional fee is required if the mark includes an individual’s name or portrait, and these statements are omitted.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).

Exception:  If the applicant fails to include a consent to use a name or portrait that appears in the mark, but the individual’s consent can be presumed because the individual named or shown in the mark personally signed the application (see TMEP §1206.04(b)), the applicant will not lose TEAS Plus status.  

If consent is of record in a valid registration owned by applicant, the applicant may satisfy the requirement for a consent statement by claiming ownership of the existing registration.   See TMEP §1206.04(c).

If the initial application includes a statement regarding the name or likeness of an individual, no additional fee is required if the statement is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.

The additional fee is required only where it is clear that the name or likeness could reasonably be perceived as that of a living individual.  The fee must be charged if the mark comprises a portrait, or of a first and last name.  If the mark comprises a title, such as Mrs. Smith, a surname, or a first name only, the examining attorney must consider whether the name is that of a particular living individual (see TMEP §1206.03), but must not require the additional fee.

Example:  The mark is STEVEN JONES, and the application is silent as to whether this name identifies a living individual.  The examining attorney must:  (1) inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name must be submitted; and (2) require the additional TEAS Plus processing fee.

Example:  The mark is DOCTOR JONES, and the application is silent as to whether this name identifies a living individual.  If there is evidence that the name identifies an individual who is generally known or well known in the field relating to the relevant goods or services (see TMEP §§1206.02, 1206.03), the examining attorney must issue an inquiry and require the individual’s written consent to register the name, but must not require the additional TEAS Plus processing fee.  If there is no evidence that the individual is generally known or well known in the relevant field, the examining attorney should not inquire or require the additional fee.

Example:  The mark is STEVEN, and the application is silent as to whether this name identifies a living individual.  If there is no evidence that the individual is generally known or well known in the relevant field, the examining attorney should not inquire or require the additional fee.  If there is evidence that the first name identifies an individual who is generally known or well known in the relevant field, the examining attorney must issue an inquiry and require the individual’s written consent to register the name, but must not require the additional TEAS Plus processing fee.

See TMEP §1206.03 for further information as to when the examining attorney must issue an inquiry as to whether a name or likeness is that of a particular living individual, and TMEP §1206.02 regarding the connection between the individual and the relevant goods or services.

819.01(p)    Prior Registration of the Same Mark

If the applicant owns one or more registrations for the same (i.e., identical) mark as of the application filing date, and the last listed owner(s) of the prior registration(s) differs from the owner of the application, the application must include a claim of ownership of the prior registration(s), identified by the United States registration number(s).  37 C.F.R. §§2.22(a)(19), 2.36.   See TMEP §812.  The TEAS Plus form accepts the entry of up to three registration numbers.  If the applicant owns more than three registrations for the same mark for which the last listed owner(s) of the prior registration(s) differs from the owner of the application, the TEAS Plus applicant may check the box "and others" after entering the numbers for the three claimed registrations.

The additional fee is required if a claim of ownership of registration(s) for the same mark, for which the last listed owner(s) of the prior registration(s) differs from the owner of the application, is omitted and the failure to claim the prior registration(s) would result in the issuance of a refusal under §2(d), 15 U.S.C. §1052(d).  37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  If the initial application includes an ownership claim for the same mark, the application will not lose TEAS Plus status if the claim is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.  

No additional fee is required if a list of claimed registrations for the same mark is incomplete (e.g., applicant owns three registrations for the same mark and only claims two of them), but the examining attorney may require a claim of ownership of additional registrations for the same mark during examination.

No additional fee is required if an applicant fails to claim ownership of a registration(s) for a similar mark (e.g., mark in application is ABC and applicant fails to claim ownership of a registration for ABC WEB BUILDERS).  However, the examining attorney will require a claim of ownership of similar marks during examination, where appropriate.

819.01(q)    Concurrent Use Applications

If the applicant seeks concurrent use registration, the application must comply with the requirements of 37 C.F.R. §2.42.  37 C.F.R. §2.22(a)(20).  That is, the applicant must, to the extent of the applicant’s knowledge, set forth the information required in TMEP §1207.04(d)(i).

If the elements for a concurrent use application are omitted, the examining attorney will issue an Office action requiring the additional fee.   See 37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  If the initial application includes a concurrent use claim with the proper elements, the application will not lose TEAS Plus status if an element is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.  

See TMEP §1207.04(d)(i) for more information about the requirements for a trademark or service mark concurrent use application.

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.

819.03    Adding a Class During Examination  

Amendments to classification are rare in TEAS Plus applications, since the identification of goods/services is taken from the USPTO ID Manual, and the TEAS Plus form does not permit the applicant to edit the "Classification" field.  In the rare case where the TEAS Plus applicant amends the application to add a product or service that is within the scope of the original identification of goods/services, but is in a different class, the fee for the additional class is the reduced TEAS Plus fee, as long as the amendment is filed through TEAS or entered by examiner’s amendment.   See TMEP §1403.02(c).

Example:  The applicant selects the identification "hair shampoo" in Class 3.  The applicant later adds "dandruff shampoo" in Class 5, which is within the scope of the original identification.  The applicant will pay the reduced TEAS Plus fee, as long as the applicant has not lost TEAS Plus status for some other reason.

If the applicant adds a class after losing TEAS Plus 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.

819.04    Procedures for Payment of TEAS Plus Processing Fee Per Class  

A TEAS Plus applicant must pay a processing fee per class to have the application examined as a regular TEAS application if:  (1) the initial application does not meet the requirements of 37 C.F.R. §2.22(a); (2) the applicant files one of the documents listed in 37 C.F.R. §2.22(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), 2.22(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).

Processing Fee Must Be Paid for All Active Classes.  If the applicant loses TEAS Plus status, the applicant must pay the TEAS Plus 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 Plus processing fee.

Example:  The original application is for two classes.  The applicant loses TEAS Plus status because in the original application, the applicant failed to include a transliteration of the Chinese characters in the mark.  The first Office action includes:  (1) a requirement for a transliteration; (2) a requirement for the additional fee for two classes; and (3) a refusal of registration as to one class under §2(d) of the Trademark Act.  If the applicant responds by submitting a transliteration and deleting the class that was refused, the applicant must pay the processing fee for two classes, because there were two classes in the application when the Office action requiring the processing fee was issued.

Example:  The original application is for two classes.  One of the items in the identification has a fill-in-the-blank element and requires amendment.  The first Office action includes:  (1) a requirement to amend the identification of goods/services; and (2) a refusal of registration because the mark is merely descriptive of the goods.  The applicant responds through TEAS by deleting a class and submitting evidence that the mark has acquired distinctiveness.  The examining attorney issues another refusal.  If the applicant responds on paper, the applicant is only required to pay the processing fee for one class, because the applicant deleted the second class before the applicant lost TEAS Plus status.

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 Plus processing fee.

No Partial Refusal.  If the applicant loses TEAS Plus status, the requirement for the TEAS Plus 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 Plus processing fee through TEAS, the applicant may use the TEAS Response to Office Action form or the TEAS Voluntary Amendment Not in Response to USPTO Office Action/Letter form. Also, 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.