The following is a summary of the key points discussed at the March 8, 2012, public meeting of the Trademark Public Advisory Committee (TPAC) at the USPTO.
The meeting covered many topics, including legislative and funding issue, performance measures, developments at the TTAB, and “Trademarks Next Generation.” The most newsworthy item was the announcement by Commissioner for Trademarks Deborah Cohn that a cease and desist letter has been sent by the Office of the Solicitor of the U.S.P.T.O. to the outfit calling itself “United States Trademark Registration Office.” This company has been sending confusing solicitations to trademark applicants and registrants that are of questionable value and are clearly intended to look like official government correspondence. More on these “trademark scams” below.
CFO’s update by Anthony Scardino:
- The USPTO budget in FY2012 includes $18 million dollars for “Trademark Next Generation” computer items.
- The FY2013 budget was recently submitted to Congress
- The FY2013 budget includes funding for an additional 12 Examining Attorneys
Legislative Update by Dana Colarulli:
- The USPTO’s Detroit office is on target for opening in July
- The USPTO has received bids for opening two additional satellite locations – more than 60 locations have participated in the process and more than 500 comments have been received
- Other legislative issues related to AIA and other patent issues
Commissioner Cohn’s update:
- Performance measures through the end of January 2012 show that trademark operations is exceeding or within the desired range for nearly all targets [see documentation below for details].
- 75% of all applications processed from start-to-finish entirely electronically.
- Application filings are up approximately 7.5% over the same time last fiscal year.
- 11 new Examiners were hired in September and are now ‘on production.’ 15 new examiners have been hired to start March 12, 0212, and another 10 will start in May 2012.
- Trademark telecommuting workforce continues to expand – it now includes employees in 25 of the 48 continental United States.
- The “tri-lateral” meeting has become the “TM5” as it now includes China and Korea as full members. The group met in December 2011 and discussed a variety of issues, including a project to have each member use common status indicators for trademark records and an effort (led by OHIM) for harmonize identifications among the TM5.
- Craig Morris is leading an effort to expand education and outreach by the USPTO to groups that are not in the trademark bar, and specifically to reach small businesses. A working group has been put together and has met and is working on ways to: engage the private sector to increase free or low cost trademark legal services; provide more CLE’s on trademark policing issues; and to reach out beyond the trademark bar.
- USPTO held a roundtable on issues related to identification of goods and services on February 24, 2012. The goals for the USPTO are to re-design the structure of the ID manual, to possibly update the descriptions within the manual, and to increase collaboration with industry groups to understand their issues and topics better.
- USPTO is co-hosting a series of roundtables with INTA. Two have already been held in NYC, upcoming ones include Alexandria, VA, Wilmington, DE, and Boston, MA.
- The Official Gazette will no longer be printed on paper at some point in the near future (this year). There are only 150 print subscriptions worldwide.
- 2012 Trademark Expo will be held October 19th and 20th.
Solicitations from trademark related vendors:
- The volume has “blossomed” in recent months.
- USPTO has placed new warning on the trademark landing page.
- Commissioner Cohn announced that a cease and desist letter was sent last week by the Office of the Solicitor of the U.S.P.T.O. to the outfit calling itself “United States Trademark Registration Office.”
- United States Trademark Registration Office has been sending trademark applicants and registrants solicitations that are deceptive. Many have thought they are from the USPTO given the similarity in names and the letter’s official look and feel.
- Commissioner Cohn noted that the letter invokes Section 43(a) of the Lanham Act.
- The Commissioner also noted that if anyone – attorneys, applicants, etc. – have any information about United States Trademark Registration Office or have been mislead by their mailing, they are encouraged to file an on-line consumer complaint with the Federal Trade Commission (“FTC”), at www.FTC.gov and/or contact the USPTO via TMFeedback@uspto.gov.
TTAB Update – Judge Rogers:
- A new senior attorney, Cheryl Butler, was recently hired. Her duties include updates to the TBMP. An update to the TBMP is planned for sometime around May.
- Cindy Greenbaum has been hired a the newest TTAB judge. She for the moment still in her former role managing the interlocutory attorneys until that role is be filled by a new hire, for which the process is underway.
- TTAB is deploying a new “quality review” unit. The unit was formerly a pilot program and will now become permanent. One of its roles is to help to ensure accuracy in the history of proceedings in TTABvue, which is also helpful for having better and more consistent data for use in performance and other measures.
- 20 precedents have been issued so far this (fiscal) year, up from the 38 issued the previous year.
- The backlog of cases at the TTAB has increased lately [see data below]. The number of incoming filings has seen some numbers up and some down from quarter to quarter over the last few years. But given increases in application filings the last two years, it is likely that TTAB filing numbers will trend up more consistently in the future if the application filing increases continue.
- A few more cases are under ACR than in the previous years.
- TTAB may hold an ACR roundtable over the summer once the staffing issues are addressed and filled.
- The number of cases operating under the old rules is down to 268, 58 of which are suspended for settlement.
CIO’s report – John B. Owens II & Raj Dolas
- TEAS update a few months ago allowed for the submission of additional “non-primary” addresses. However, a glitch in the USPTO system meant that until recently many of the “non-primary” addresses were not receiving any updates. USPTO is now fixing this situation.
- Many projects are underway for a variety of new and/or improved computer systems.
- TSDR 2.0 will be coming soon and will include links to assignment and TTAB documents.
- I asked about TSDR and the phase out of TARR. I noted that:
- a static link would be very useful to practitioners so they could provide to clients and others to view their filings online.
- more advance notice to outside users about the “sunsetting” or changing of systems would be very useful
- The CIO noted that they were aware of the disruption caused by the planned TARR > TSDR changeover but that TSDR will replace it and will be a much better and more flexible system. TSDR does have capability for generating static links and they will likely make that information available.