What is the Difference Between (regular) TEAS, TEAS plus and TEAS RF
USPTO Trademark Applications? What does Loss of TEAS Plus Status mean?
TEAS PLUS is designed to be easier for both the applicant and the USPTO and comes with a reduced fee. In TEAS Plus the applicant can only choose goods and services identifications that are already in the goods and services ID manual and have already been approved for use by the USPTO. The rate of refusals for TEAS plus is lower than that of TEAS perhaps for this reason, 30% of TEAS PLUS applications publish for opposition without a refusal (70% are refused).
TEAS RF applicants do not need to select an identification of goods and/or services from the Trademark ID Manual or satisfy the other TEAS Plus requirements at the time of filing.
Filing on paper is discouraged by the USPTO. Fees are much higher than electronic filing.
TEAS Plus and TEAS RF are a great way to save money and decrease the risk of refusal if an existing goods/service category is strategically good for your business.
BEWARE OF LOSS OF TEAS PLUS STATUS! At the end of a TEAS PLUS application is a checkbox where the applicant is reminded and warned: “REMINDER: Because you are filing under TEAS Plus, please be sure you have entered the following, if applicable within the facts of your application: (1) claim of prior registration(s); (2) translation; (3) transliteration; (4) consent of individual identified in mark; and (5) concurrent use claim. Otherwise, you will lose TEAS Plus status and be required to pay an additional $125 fee.” (Emphasis added)
If you need a custom goods/services category, regular TEAS may be the best way to go. Choosing a goods/service category strategically can be a way to avoid refusal and opposition, being too broad may open you up to more likelihood of confusion and too narrow can be limiting.
Along with the more standard identification of goods or service process in TEAS Plus comes extra requirements in order to use TEAS PLUS such as those found in the chart below. Failure to meet all the TEAS plus extra requirements in the initial application may result in a refusal and a requirement to now pay the initial $50 fee savings in order to respond to the refusal and a change of the application to TEAS. Examples would be the failure to provide a translation of a foreign term or misuse of the fill-
The USPTO is trying to get rid of all paper applications and TEAS PLUS can only be used with all electronic submissions. Since the USPTO has to scan in all paper submissions and manually enter the data which is more expensive and more prone to errors, it is not hard to understand why there has been a push to go all electronic.
Benefits of Using TEAS: Advanced Application May Avoid Likelihood of Confusion
TEAS can be a benefit over TEAS Plus if the user can craft a goods/services identification that makes it clear that there is no conflict between the new application being filed and an existing prior pending application or registration that is ‘confusingly similar’. (Likelihood of confusion refusals are the most common refusal.)
Let’s say that a search of TESS for Product R showed that someone already has registered a ‘similar’ trademark for Product X. If Product X is contained in the category AB, applying for a new mark in AB using TEAS Plus because it is cheaper will probably cause a refusal or opposition. But, if Product R can be accurately described using a TEAS category (or possibly a TEAS Plus) that is not contained in AB because the products really aren’t ‘related’, a refusal or opposition can potentially be avoided. If the goods and services are related and would be confused, changing the ID should make no difference and the mark should still be refused.
Learning what terms of art mean like ‘confusingly similar,’ ‘similar’ and ‘related’ to avoid refusals and oppositions requires advanced skills in trademark law. Case law, which is constantly changing, may support that the goods or services are not related. Not Just Patents can search and prepare your application for you to try to avoid refusals and oppositions. Strategies that produce strong trademarks at the end of the day may be better than saving some money at the beginning. The cost of starting over with a new trademark can be devastating to a business; the cost of a delay in a product introduction can stifle growth and seller and consumer confidence.
Benefit of Using TEAS Plus: Preparation Pays Off in Time & Money & Less Refusals IF You fill out the application correctly
TEAS Plus applications issue faster because the goods and services categories will not be refused for indefiniteness or other reasons. (ID refusals are very common.) TEAS Plus applications also issue faster because all of the necessary information has to be prepared and inputted at the time of the application in order to file the application. A TEAS applicant will still have to supply almost all of the same information but they will have to do it in a Response to Office Action when the application is refused for not having all the proper information. Using up a nonfinal response (you usually only get one) to provide basic information may be costly in money and in time. Responses to Office Actions take time and can involve attorneys fee. If you are applying for a design mark that is difficult to describe, TEAS may be better than TEAS Plus because the examiner will write the description for you. If you fail to describe a difficult design mark well enough on TEAS Plus, the examiner or their paralegal may write it for you and charge the $125 fee to convert to TEAS.
See Why Not Just Patents? if you have already applied and been refused.
Don’t assume that protecting your reputation and legal rights is too expensive, abandoning your trademark registration because of problems from office actions and refusals may result in a larger losses-