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)(17).
An additional processing fee is required if the mark includes an individual’s name or portrait, and these statements are omitted. 37 C.F.R. §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 be required to pay the additional processing fee.
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 processing fee will be required if the statement is later amended. See 37 C.F.R. §2.22(c).
The additional processing 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 processing 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 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 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 processing 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 processing 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 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 §1206.02 regarding the connection between the individual and the relevant goods or services.
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 U.S. registration number(s). 37 C.F.R. §§2.22(a)(18), 2.36; see TMEP §812. The TEAS Plus application 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 applicant may check the box "and others" after entering the numbers for the three claimed registrations.
An additional processing 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. §2.22(c). If the initial application includes an ownership claim for the same mark, the applicant will not be required to pay the additional processing fee if the claim is later amended.
No additional processing 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 processing 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.
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)(19). 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 processing fee. See 37 C.F.R. §2.22(c). If the initial application includes a concurrent use claim with the proper elements, the applicant will not be required to pay the additional processing fee if an element is later amended.
See TMEP §1207.04(d)(i) for more information about the requirements for a trademark or service mark concurrent use application.
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 application 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 application fee. See TMEP §1403.02(c).
Example: The applicant selects the identification "hair shampoo" in Class 3. The applicant later adds "medicated dandruff shampoo" in Class 5, which is within the scope of the original identification. The applicant will pay the reduced TEAS Plus application fee, as long as the applicant has not failed to meet the TEAS Plus application requirements for some other reason.
If the applicant adds a class after failing to meet one or more of the TEAS Plus application requirements, the applicant will be required to pay the regular TEAS Standard fee per added class, in addition to the additional processing fee.
A TEAS Plus applicant must pay an additional processing fee per class if the initial application does not meet the requirements of 37 C.F.R. §2.22(a). 37 C.F.R. §2.22(c). Thereafter, the application will be examined as a TEAS Standard application, including for the purposes of determining fees. 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 an applicant does not meet all the TEAS Plus application requirements, the applicant must pay an additional 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 does not meet the TEAS Plus application requirements 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 processing 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 additional processing fee for two classes, because there were two classes in the application when the Office action requiring the additional processing fee was issued.
Examiner’s Amendment. If all remaining issues can be handled through a telephone or email conversation with the applicant or the applicant’s qualified U.S. attorney, and a deposit account is used to pay the fee or an authorization to charge the fee to a credit card is permitted to be 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 email. See TMEP §405.03 regarding deposit accounts.
Combined Examiner’s Amendment and Priority Action. If all of the issues except payment of the additional processing fee are resolved by a telephone or email conversation with the applicant or the applicant’s U.S. attorney, the examining attorney may issue a combined examiner’s amendment and priority action (TMEP §708.05) to enter the amendment(s) and require payment of the additional processing fee.
No Partial Refusal. If the applicant fails to meet a TEAS Plus application requirement, the requirement for the additional 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 additional processing fee through TEAS, the applicant must use the TEAS Response to Office Action (ROA) form or the TEAS Voluntary Amendment Not in Response to USPTO Office Action/Letter form.
