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.