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The U.S. Patent & Trademark Office (USPTO) is a federal entity and one of 14 bureaus in the U.S. Department of Commerce. In the late 1990s the USPTO, led by the Office of Management and Budget, participated in efforts to enhance and simplify processes within the federal government. One proposal was to expand the Electronic Government Program, or E-Government, by maximizing technological advancements to improve how the federal government serves its private-citizen and business customers. The goal was not to simply place scores of forms on the World Wide Web, but to provide better services and information that an increasingly Internet-savvy public could effectively utilize. As a result of the Electronic Filing Initiative for Trademarks, the Trademark Electronic Application System (TEAS) was created. The TEAS pilot program was launched in November 1997 with approximately 50 participants, then opened worldwide in October 1998. Through TEAS, previously paper-based transactions, including receipt and processing of trademark applications, amendments, responses to office actions, petitions, status inquiries, payments and other correspondence are submitted directly to the USPTO via the Internet. The address for TEAS is www.uspto.gov/teas/index.html. Although the USPTO still accepts paper filings, there is a significant surcharge for some documents that are not filed electronically. At this writing, it is yet unclear if the USPTO will follow through with its intention to mandate that all documents be filed via TEAS. According to a source at the USPTO, approximately 93 percent of all new applications are now submitted electronically. Despite its popularity and the USPTO’s claims that it is a very simple process, TEAS has certain unique features that even the most seasoned trademark paralegal will need to learn. Indeed, the learning curve for navigating TEAS with ease can be formidable. First and foremost, TEAS has changed the entire structure of the process of filing. Institutional decisions involving technical as well as legal considerations have to be made, and the trademark paralegal often finds him or herself at the center of these discussions. In addition, the paralegal’s role includes educating the clients and trademark attorneys to think in more concrete terms so that the scope of the information gathered is complete before an online transaction can be initiated. The familiar comfort zone of tried-and-true paper form documents has been replaced with the stress of acquiring, becoming proficient in, and keeping current with computer technology. Understanding the differences between PDFs, JPEGs, GIFs and TIFFs; knowing which file format is acceptable as an attachment to specific electronic documents; and how to properly manipulate an image so that it does not exceed the megabyte or pixel dimension requirements are key elements to this proficiency. These images, such as trademark logos or designs, and specimens that show use of a trademark (marketing brochures, Web pages and digital photographs) must then be saved and uploaded into the electronic document. The best course of action is to be prepared before entering an online session. Both “hard” and “soft” computer tools are needed for successful e-filings, including color scanners, digital cameras and printing ports, Adobe Acrobat Professional, Adobe Photoshop, Netscape Navigator or Microsoft Internet Explorer. It is imperative for trademark paralegals to sharpen their technical skills, to be fully aware of trends and equipment, and to have knowledgeable support staff to assist. Even more important than any specific piece of hardware, or software program, is the creativity, organization and knowledge that the trademark paralegal brings to the process. This human connection is what links all of the pieces together. The TEAS forms are not always consistent, and each type of filing may have differences that are not obvious until uncovered online while attempting to input the data into an electronic document. For example, when filing use-based trademark applications, the USPTO requires that the specimens be attached in JPG format. For a typical office action response, many of the objections raised by examining attorneys, such as disclaimers, amendments to goods and services, etc., can be satisfied easily because they are encoded in the e-forms, and the text surrounding them is generated automatically. However, when preparing a substantive office action response, attaching the arguments and exhibits is accomplished differently. The form itself can be saved as an HTML file. The “input” form, which is a chart containing the raw data, can be saved by cutting and pasting it into a Microsoft Word document, or by printing it to an image file and attached in that manner. There are many significant advantages to electronic filing. Once prepared, documents are forwarded to clients for their review, approval and e-signature via a link within e-mail. No longer are they sent by regular mail or by fax, with the hope that the client will notice, execute and return them, also by mail or fax. Checks do not have to be written to pay the filing fees because credit cards or deposit account numbers are inserted into the e-documents. There is also instant gratification. Once validated, signed and filed, “receipts” or confirmations by return e-mail are nearly instantaneous. When e-filing, the data is transferred directly from the information typed in by the applicant or the trademark paralegal; therefore, these confirmations require only cursory scrutiny, unlike the official receipts issued with paper filings. The USPTO fees for some documents filed electronically are lower than the fees for paper filings, and the forms are available and can be filed and recorded online at any time, day or night, weekdays, weekends and holidays. Once acclimated to the TEAS electronic filing system and its advantages, it is hard for trademark professionals to consider returning to paper. Previously, individuals without legal counsel or trademark experience were able to fill out a paper form and mail it to the USPTO with minimal difficulty. They may now find filing online to be a daunting endeavor, especially when attachments and image files are involved. This creates an excellent opportunity to expand the scope of the trademark paralegal who offers the training and technical skills to meet the needs of the client as well as the USPTO. FRANCES LALA LEVANIOS is a senior legal assistant at Ballard Spahr Andrews & Ingersoll, prosecutes U.S. trademark and copyright applications. She is a member of the International Trademark Association and the Philadelphia Association of Paralegals and its intellectual property committee. She can be contacted at 215-864-8148 or [email protected] LOUISA STROUSE BOIMAN is a legal assistant at Ballard Spahr Andrews & Ingersoll, prosecutes U.S. trademark and copyright applications. She is a member of the Philadelphia Association of Paralegals. She can be contacted at 215-864-8666 or [email protected]

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