The USPTO recently announced, via notice in the Federal Register, that it intends to issue electronic trademark registration certificates, and only will print physical certificates upon request and with a small fee ($25 per copy). Our firm submitted comments this week generally supportive of this change, and the environmental benefits, while raising some questions about the amount of savings for the USPTO that will result, and how those savings will be spent. Our full comments:
Comments Regarding the United States Patent and Trademark Office’s Proposed “Issuing of Electronic Trademark Registration Certificates”
The following are the comments of the firm of Erik M. Pelton & Associates, PLLC® (EMP&A) of Falls Church, Virginia, in response to the “USPTO To Begin Issuing Electronic Trademark Registration Certificates”[1] published December 15, 2021.[2] The full request for comments was published in the Federal Register in Vol. 86, No. 238 at page 71249.
Introduction
The United States Patent and Trademark Office (USPTO) has proposed issuing trademark registration certificates electronically rather than by paper copy to make certificates more accessible and decrease the time for applicants to receive them, while simultaneously furthering the USPTO’s efforts to fully transition to electronic processing for trademark applications. We commend the USPTO’s effort to make the process of providing trademark registration certificates more accessible, efficient, and environmentally friendly. However, we believe that USPTO users are entitled to more information about how much money the USPTO will save as a result of this change, and how those savings will be spent.
About Erik M. Pelton & Associates, PLLC
EMP&A is a boutique trademark law firm located in Falls Church, Virginia. Established in 1999 by Mr. Pelton after working for the USPTO as a trademark examiner, EMP&A has registered more than three thousand U.S. trademarks over the last 20 years for a client base consisting primarily of small businesses. The firm has represented dozens of small business plaintiffs and defendants in all phases of trademark disputes and Trademark Trial and Appeal Board proceedings. EMP&A and its attorneys are actively involved in the International Trademark Association (INTA), the American Bar Association’s Intellectual Property Law section (ABA-IPL), and the Association of Intellectual Property Firms (AIPF).
Benefits of Electronic Registrations
We recognize and support that no longer sending paper registration certificates to trademark applicants will reduce the cost, time, and environmental impact associated with trademark registrations. We also support the option for registrants to request a physical printed registration certificate, at a small fee. The comment notes that the “change will make certificates more accessible.” 86 Fed. Reg. 71249, 71250 (December 15, 2021). We encourage the USPTO explain how the certificates will be more accessible. For instance, how will the registrations become more accessible? Will the USPTO provide an easier/shorter link? Something embeddable? Or something other than the current PDF version of a certificate?
How Will Cost Savings Be Spent
The USPTO has reached the decision to utilize electronic certificates, in part, due to the cost-savings it would provide. Specifically, the notice states that “the printing process is costly and time-consuming. Each registration certificate must be reviewed by a team of in-house contractors, printed on special paper, and then mailed to customers.” 86 Fed. Reg. 71249, 71250 (December 15, 2021). EMP&A supports the cost-saving efforts by the USPTO; however, we believe more transparency is justified regarding how much money will be saved by this change and how the USPTO will use the saved funds, especially considering that the USPTO is likely to save several million dollars per year after implementing this change.[3]
Will this seemingly significant reduction in costs for the USPTO lead to a reduction in filing fees elsewhere? For instance, will the USPTO reduce the filing fees for trademark applications or renewals to pass on these savings onto applicants? Given that a fee reduction has not been proposed at this time, we must presume the savings will go elsewhere. However, the USPTO has not disclosed what it will do with the savings. Will the USPTO hire more trademark examiners, invest more in trademark examiner training, and/or update and enhance the outdated information technology (IT) currently being used? How much money does the USPTO anticipate saving as a result of this change to electronic certificates?
While we applaud the USPTO for transitioning to the more environmentally-friendly digital world of certificates – and making the entire application process electronic from end-to-end – we urge the USPTO to be more open regarding the amount of savings it will receive due to this change, and to engage users in a discussion of how to spend those savings. EMP&A encourages the USPTO to utilize the additional revenue and savings in a transparent and efficient manner by (1) reducing fees elsewhere in the trademark registration process, (2) hiring more trademark examiners, (3) invest in additional training for trademark examiners, and/or (4) enhancing the USPTO’s current IT systems.
Timeliness
Another factor in the USPTO’s decision regarding electronic trademark certificates is the potential for a quicker issuance of trademark registrations. The USPTO stated that the “electronic trademark issuance process would permit the USPTO to issue trademark registrations approximately one to two weeks faster than the current paper process by discontinuing the printing, assembling, and mailing of a paper trademark registration certificate upon issuance.” 86 Fed. Reg. 71249, 71250 (December 15, 2021). EMP&A fully supports the reduction of wait time by giving registrants the ability to view and print their electronically issued trademark registration certificate through TSDR, rather than waiting for their paper trademark registration certificate to be sent by mail. However, EMP&A requests that the USPTO provide more details regarding its plan for reducing the registration process timeline to ensure applicants and registrants benefit from this proposed change, preferably with an estimate and explanation of the time between the close of the publication period and the issuance of the electronic certificate. Given the tremendous benefits of registration, any steps that can minimize delays for qualified applicants to receive their registration are extremely beneficial.
Conclusion
The USPTO’s efforts to reduce cost, time, and paper in the registration process are laudable and a timely transition into the digital age. While transitioning to electronic certificates, however, we urge the USPTO to provide details on how registrations certificates will be ‘more accessible,’ how much money will be saved, how the savings will be spent, and how the registration process timeline will be reduced.
Thank you for the opportunity to comment on this proposed change. We look forward to hearing more details about the electronic trademark registration certificate issuance.
Respectfully submitted,
Erik Pelton
Erik M. Pelton & Associates, PLLC®
[1] https://www.federalregister.gov/documents/2021/12/15/2021-27116/uspto-to-begin-issuing-electronic-trademark-registration-certificates.
[2] EMP&A notes that the Publication Date of 86 FR 71249 was December 15, 2021. However, the Comments Closing Date was also December 15, 2021. EMP&A requests that the proper Comment Closing Date be updated, along with pushing back the Comment Closing Date in order to accommodate any potential commentators who may have been discouraged by the disclosure of the incorrect Comment Closing Date.
[3] The notice states that the USPTO prints between 6,000 and 9,000 registrations per week Printing and sending a registration certificate, including materials and labor, costs $15 (the USPTO will be charging $25 for new certificates, according to the notice), then the USPTO will save at minimum $90,000 a week by switching to electronic certificates. (In FY2021, the USPTO issues 337,814 certificates of registration; at $15 each that would lead to a savings of more than $5.5 million.)
