Archive for June, 2014

My 8 year old son likes to look up trademarks, since I have apparently passed on my interests to him. He asked me if the USPTO had an app he could use. He was dumbfounded when I told him they don’t.

The USPTO should be embarrassed. The USPTO is all about innovation, invention, and the future, yet it’s online platform is stuck in the past.

According to the USPTO websiteThe USPTO furthers effective IP protection for U.S. innovators and entrepreneurs worldwide by working with other agencies to secure strong IP provisions in free trade and other international agreements. It also provides training, education, and capacity building programs designed to foster respect for IP and encourage the development of strong IP enforcement regimes by U.S. trading partners.

Even a simple app with information about IP protection – and links to the USPTO’s video and vast information sources – for applicants, registrants, inventors, and business owners would be useful.  And not difficult or expensive to create.

Until then, there is always Apptorney.

Comments of Erik M Pelton & Associates, PLLC regarding the USPTO’s Request Comments on Trademark Applications and Renewals – Reduction of Fees.

For details on the USPTO’s request for comments, see Federal Register notice here.

PELTON – Comments on TM Fee Reduction 2014

I have recently received multiple inquiries from clients wondering about mail they received from Trademark Compliance Center. Once client had already written a check and was prepared to send it in. What is the Trademark Compliance Center?  IT IS NOT A GOVERNMENT AGENCY.  Completing their form or paying them money has nothing to do with the status of a trademark application or registration at the USPTO.  The soliciation from TCC is cleverly timed to go to applicants – even those with counsel – during their application process so that they are even more likely to believe it is connected to the USPTO.

I have no idea whether the services provided by TCC are commensurate with their charges. Registration with US Customs is quite valuable, as I have written several times. (See:  What concerns me about TCC is that they are contacting applicant’s represented by counsel and (A) possibly offering to provide a legal service,  and (B) resembling official government correspondence. The USPTO even warns applicants about the Trademark Compliance Center on its WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications page. Several complaints regarding TCC have been filed on

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TPAC Meeting Summary – June 2014

Posted by ipelton on: June 24th, 2014

NOTE 1 – I used to title these blog posts regarding “Quarterly” meetings, but during the last 18 months or so the TPAC committee meetings have been held three times a year, not four.  (See meeting archives here.)

NOTE 2 – The USPTO seeks nominations for its Patent and Trademark Advisory Committees. See USPTO Press Release 14-19 here.

The Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA last week on Friday, June 20, 2014.  The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting:

The next meeting of TPAC will be Thursday October 16, 2014, the day before the 2014 USPTO Trademark Expo.

Legislative Update – Dana Robert Colarulli, Office of Government Affairs Director

  • While there have been a variety of IP bills put forward and hearings held, it is unlikely that much or anything will happen this year due to the Congressional elections in the fall.

Budget Update – Tony Scardino, CFO

  • Total trademark financial collections are up from FY 2013 and in the range predicted for FY 2014.
  • USPTO currently seeking comments on its proposal to reduce certain fees. Final rule is expected to be public in October 2015, and to be implemented in January 2015.

Trademark Operations Update – Deborah Cohn, Commissioner for Trademarks

  • USPTO currently has 433 trademark examiners, with a total of 407.6 Full-Time-Equivalent positions.
  • USPTO expects to hire 30-35 new trademark examiners next fiscal year.
  • TMEP was updated in April, and includes among the updates a much more detailed section on trade dress (TMEP Sect. 1202.2(b)).
  • The Section 8 specimen pilot test is almost complete. A “surprising number” of registrants when challenged about use of all their goods/services deleted some of them.
  • USPTO held a roundtable recently on amendments to identifications due to changing technology evolution,and will likely propose to permit a small number of changes but must balance the public having full notice of the registered goods/services. USPTO will be seeking comments on its proposal soon.
  • The “Timeout” period for TESS users was recently increased from 15 minutes to 20 minutes.
  • The USPTO is working on being able to send out Section 8 reminder emails to registrants on the first day of the 5th year following the registration.

TTAB Update – Gerard Rogers, Chief Administrative Judge

  • Filings have increased over FY 2013 — in particular Petitions to Cancel rose 12.7%
  • Pendency has been reduced  in most areas.
  • New “Deputy Chief Administrative Judge” position has been created and the position should be filled over the summer.
  • TTAB has funding to hire several new judges in its budget for next fiscal year.
  • Judge Rogers did not comment on the recent Redskins decision since the case may be appealed.
  • TTAB will likely hold a roundtable in the fall on regarding the possibility of leveraging some of the ACR efficiencies into the rules for all cases.
  • TBMP update will be published in the next month or so.

TPAC June 2014 Packet

The USPTO has proposed reducing some trademark filing fees. They request public comments.

Some quick questions to consider as you perhaps comment:

  • Are the fee reductions good? (Of course how could they be bad?)
  • But are they the right reductions?
  • Should the cost of filing on paper be increased to discourage such filings which cost a lot more to process?
  • Are there any creative solutions to making TEAS+ more accessible by making its identification of goods requirements less difficult to comply with?

USPTO’s request for comments:

Note that I will post our firm’s full comments in the next days.