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.