Carl Oppedahl was one of the founding partners of Oppedahl & Larson, and has served as an adjunct professor at Cardozo Law School where he taught Advanced Patent Law. He is on the faculty of the Practicing Law Institute’s Patent Bar Review Course. Carl Oppedahl writes a column on legal technology for the New York Law Journal.

(Archived December 1, 1998)

For some months now it has been possible to prepare and print out a trademark application using the USPTO web site. Such applications were filed in the usual way with a blue-ink signature and an Express Mail certificate.

There is a new development. As you may see at http://www.uspto.gov/teas/ , the USPTO has quietly made it possible to file trademark applications online. The specimen is a GIF or JPEG file attached to the document, and the signature is … well, there isn’t really a signature. Here’s how it is explained on the USPTO web site:

The application will not be “signed” in the sense of a traditional paper document. To verify the contents of the application, the appropriate person (i.e., the individual applying, or a corporate officer or general partner of the applicant, and not the applicant’s attorney) must enter any combination of twelve or fewer characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable “signatures” could include: /john doe/; /harry123/; and /123-4567/. The application may still be verified to check for missing information or errors even if the signature and date signed fields are left blank.

The signer also signs a paper form formally adopting the slash-thing as his or her official signature, and the paper form is retained in the signer’s files (it is not sent to the Trademark Office).

For a trademark attorney, this system permits obtaining a filing date immediately, so long as the signer happens to be physically present in the attorney’s office and can type (or at least hunt and peck). On the other hand, if the signer is physically present in the attorney’s office, one can use a more traditional physically printed application with a blue ink signature. I guess the electronic filing would be handy when it is too late in the day to go to the Post Office, or when the Post Office happens to be closed. It also saves the postage of an Express Mail envelope and the fuss of a trip to the Post Office.

The web site also describes a complicated procedure which could be followed if the signer is physically elsewhere. The attorney downloads a “portable form”, and (the web site is not very clear about this) then the “portable form” is forwarded to the applicant. (One assumes this would be done by means of an email attachment.) Then the application is “signed” by the signer with the slash thing, by means of some unclear procedure that I speculate involves the use of a web browser whilst viewing the disk file from the email attachment. The signer also signs the paper form adopting the slash-thing as his or her signature. The attorney then receives the application back from the applicant (presumably by means of an email attachment). The web site then explains that it is necessary once more for the attorney to “attach” (though this is not made very clear) the specimen (that GIF or JPEG file) and the design (if it is a design mark) to the application, and then somehow the application is submitted to the Trademark Office via the Web.

Such a procedure presumably requires a client who is fluent with the sending and receiving of email attachments, who has an appropriate web browser (it seems only the newest and fanciest web browsers will do, according to the USPTO web site), and who knows how to use a web browser to view a disk file (rather than the more usual viewing of files that are on the Internet somewhere, and that have URLs).

Just this evening I called up a client who wants a trademark application filed. I told him I could prepare the application, fax it to him, have him sign it, have him overnight it back to us (tomorrow, since it is late in the evening), and we could have it on file the day after tomorrow.

Or, I explained, I could email him a file, have him view it in his web browser, have him select a typed signature, have him “sign” the document in the browser, have him sign the paper adopting the typed signature, and have him email the file back to me.

The client said “all that, just to get an extra day or two earlier of filing date?”

He said, let’s stick with the paper application.