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TPAC Meeting Summary – September 2015

Posted by ipelton on: September 29th, 2015

On Friday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA.  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 Friday meeting marked some firsts and some lasts. This was the first time USPTO Director Michelle Lee was able to attend the meeting and address the committee. The meeting also marked the end of the fiscal year (September 30th) and saw the end of the TPAC term of three members of the committee: Dee Ann Weldon-Wilson, vice chair Kathryn Barrett Park, and chair Maury Tepper.

Comments from the Director – Undersecretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee

Director Lee expressed her appreciation for the committee’s work, and noted that she once served on TPAC’s patent counterpart, the Patent Public Advisory Committee. The Director told the committee about upcoming openings of regional offices in Silicon Valley and Dallas, both set for this fall. The offices will play a big role in the PTO’s continuing educational outreach efforts. The Director also noted that the PTO expects to continue normal operations if Congress does not pass a budget or continuing resolution next week.

Trademark Trial and Appeal Board – Chief Administrative Trademark Judge Gerard Rogers

  • The TTAB is meeting its goals for shortening the pendency for cases and motions before the Board.
  • The Board is not making any major changes in the wake of the Supreme Court’s decision in B&B Hardware v. Hargis. The Board is likely to be more nuanced in its use of language and more clear in its opinions about how submitted evidence factors into its decisions, however, in a nod to the Supreme Court’s holding that TTAB decisions can be preclusive.
  • The Board is going to continue public outreach efforts. In particular, the Board will continue holding oral arguments in public forums, including one coming up at Loyola Law School in California.
  • As the Board has discussed for some time, it is likely that we will see rules changes concerning process and procedure soon, possibly as early as year. We learned that TPAC has already seen draft copies of the proposed rules. The Chief Judge expects that as a result of B&B Hardware, discovery at TTAB may expand, but only in those where use in commerce is really at issue.

Legislative Update – Dana Robert Colarulli (Director, Office of Governmental Affairs)

  • There isn’t currently a lot of trademark activity in Congress, although the Washington football team’s name is still an issue. H.R. 3487, introduced by DC’s non-voting member Del. Eleanor Holmes-Norton, attempts to strip the NFL’s anti-trust exemption as long as the name stays in use.
  • Congress has been very involved with the USPTO’s efforts at the World Intellectual Property Organization (WIPO), which was discussed in more detail later in the meeting.
  • Colarulli provided some more insight into the Congressional budget talks. He noted that the PTO would need authorization from OMB to stay open if there was no continuing resolution. He expressed optimism that there would be no shutdown.
  • There was discussion about a provision in a pending patent litigation abuse bill that concerns trademark appeals. The bill would change jurisdiction for certain TTAB appeals. In cases where the appellant appealed to the district court instead of the Federal Circuit, the bill would send any appeal of the district court judgment to the Federal Circuit instead of the appropriate regional circuit court. The PTO expressed support for the bill, while members of the committee disagreed, citing concerns of the IP bar.
  • Finally, committee discussed the current state of the Copyright Office, including possibility of putting it under the USPTO agency.

USPTO Budge Update – Tony Scardino (Chief Financial Officer)

  • Fiscal Year 2015 closes at end of this month, and the budget for 2017 was just submitted to OMB.
  • Revenues were in line with projections. Although application numbers were up, the reduction of certain trademark fees implemented January 17, 2015 reduced overall revenue a drop.
  • This year, the PTO made use of “overflow” money to help pay for continued development of the IT systems.
  • USPTO is conducting a biennial review of all its fees, including some proposals to adjust trademark and TTAB fees. A decision on whether to propose changing any fees next year will be coming soon, and must be made at least 30 days before the start of the next presidential administration.

Trademark Operations – Commissioner Mary Boney Dennison

  • Commissioner Denison thanked the outgoing members of the committee with certificates of appreciation.
  • The Commissioner noted that filings are up, pendency goals are within targets, and quality goals are above targets, too. Filings are up10.8% above last fiscal year (prediction had been 6%), and the PTO expects 7-8% increases annually from 2016-2020.
  • The PTO employs 456 examining attorneys. 85% of EAs telework full time from 29 states. The PTO hired 43 new EAs this year, and will have 20 new EAs starting in November. Trademarks is also likely to hire approximately 30 in the next few months.
  • New hires now go to an entirely new law office rather than be divided among existing law offices. This is part of an ongoing pilot training program.
  • Trademarks has a new administrative position: Deputy Commissioner for Trademark Administration, for which Trademarks will be interviewing candidates soon. This position will include IT oversight.
  • Trademarks is working on a plan for enhancing customer service, including website instructions. The Trademarks will have a training day in April 2016 for all employees.
  • Commissioner Denison shared updates on two additional pilot projects at the PTO. First, the PTO is exploring post-registration ID changes due to technology evolution (i.e., subbing out 8-track tapes for MP3s). The pilot program commenced on Sept 1. See the PTO website for more details.
    The PTO also concluded its post-registration use pilot, which studied the actual use of marks for their registered goods upon filing of Section 8 renewals. The PTO is still considering its next options. Random audits of registered marks are the most likely plan for now.
  • Finally, public outreach efforts continue. A “Basic Facts” video had 345,000 views online, and bar association roundtables will be held at the new satellite offices in Silicon Valley and Dallas.

International Policy – Shira Perlmutter and Amy Cotton

  • The PTO’s International Policy team has been very busy dealing with the World Intellectual Property Organization and the members of the Lisbon Treaty on Geographic Indications.
  • Lisbon Union countries have not been adequately supporting implementation through fees, which the PTO believes has resulted in U.S. patent and trademark owners subsidizing the WIPO’s work under the treaty.
  • New regulations were adopted this spring over the strong objection from the U.S. and other countries. These regulations create perpetual protection once on the international register and prohibit those indications from becoming generic, which is all antithetical to U.S. principles of IP law.
  • The U.S. is exploring alternative approaches, and may be prepared to ‘block’ the WIPO budget over these issues.
  • The EU is undergoing changes in its IP system. The EU’s trademark office, OHIM (Office for Harmonization in the Internal Market) will soon be reorganized. There were also several new regulations passed as part of a new directive. The EU now has a “traditional terms” refusal, which will refuse marks that contain traditional terms such as “Chateau.”

IT Update Chief Information Officer John Owen II & Manager Raj Dolas

  • The IT updates and development of TMNG (Trademark Next Generation) continues, although slowly. The project is facing a lot of difficulties dealing with both the old legacy systems and the new systems, and the team is constantly discovering new problems with merging the two systems. Right now, much of the work is focusing on the back-end and systems for the Examining Attorneys and trademark staff.
  • The IT team has rolled out a new Trademark ID manual. The team has also finished the big task of migrating all images (5+ million) and documents (200+ million) from the legacy system to the next generation system.
  • The team has also increased the size limit for attachments in the legacy system, making filing responses with evidence easier.
  • The IT team received a lot of questions from the committee about the timeline of updates and problems the team faces, as this portion of the meeting has some of the greatest impact on trademark owners and trademark law practitioners.

2015 09 25 TPAC Handouts

Recent Client Trademark Registrations LXXXIl

Posted by ipelton on: September 18th, 2015

The following is another update of recent Erik M. Pelton & Associates client trademark registrations obtained from the public records of the USPTO so readers can see real  examples of brands and marks which are being protected – and the wide range of variety in brand names, logos, products and services. [Click trademark or logo to open USPTO records in a new window]

  • BARBERA SOLUTIONS – Professional business consultation and business management consultation
  • SURF KITCHEN – Barbecue dry rub; Barbecue sauce
  • Trademark image–  Eyewear
  • TAYRONA OIL – Wholesale distributorships featuring lubricants and fuels
  • Trademark image – All purpose carrying bags; backpacks
  • TACTIKES – All purpose carrying bags; backpacks
  • ECART – Computer software in the field of health care featuring algorithms for evaluating clinical decision making and patient care, detection of patient deterioration and cardiac arrest
  • Trademark image – retail store and online retail store services featuring veils and head pieces
  • MARY WITH A VEIL – retail store and online retail store services featuring veils and head pieces
  • Trademark image – Providing awareness, namely, promoting public awareness in the field of safe driving
  • THE BOLD FEW – Copy writing for advertising and promotional purposes; public relations; marketing consulting
  • ADDAX – Back packs, travel bags
  • BROKEN GEAR – Clothing and apparel, namely, hats, shirts, shorts, sweatshirts
  • SUNSET STUDIOS – Consulting in the field of telecommunications technology as pertains to residential and commercial audio and video equipment, telecommunications equipment, home theater equipment, telecommunications technology, telecommunications wiring, telecommunications hardware, telecommunications interfaces, and telecommunications power management; design of telecommunications apparatus and equipment as pertains to residential and commercial audio and video equipment, telecommunications equipment, home theater equipment, telecommunications technology, telecommunications wiring, telecommunications hardware, telecommunications interfaces, and telecommunications power management; programming of multimedia equipment and applications as pertains to residential and commercial audio and video equipment, telecommunications equipment, home theater equipment, telecommunications technology, telecommunications wiring, telecommunications hardware, telecommunications interfaces, and telecommunications power management
  • MOVE BETTER. GET STRONGER. – Physical fitness instruction; consulting in the field of fitness, exercise, athletics; Personal fitness training services; Physical fitness instruction; Conducting fitness classes; Physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; Physical fitness training services; Providing a website featuring information on exercise and fitness; Providing fitness and exercise facilities
  • HENDRICKS BBQ – Restaurant and Carry Out Restaurant Services
  • MASTER OF FINANCIAL TECHNICAL ANALYSIS (MFTA) – Testing to determine professional competency in the field of technical analysis of markets
  • CERTIFIED FINANCIAL TECHNICIAN (CFTE) -Testing to determine professional competency in the field of technical analysis of markets
  • HOOP TEA – T-shirts, Sweatshirts, Hats
  • GOD BLESS THE HORSE – Jewelry
  • QUANT HC – computer software and mobile software for data processing and analytics in the field of health care and patient care
  • LEFTY’S – Non-alcoholic cocktail mixes

 

What the new Google logo means

Posted by ipelton on: September 10th, 2015

You have probably read quite a bit about the revised Google logo launched last week. It made a lot of news, of course, since Google is a giant brand that most of use interact with many times a day. Many designs have panned it.

Regardless of whether you think you like the new Google, it it here to stay. It is relevant to the overall trends in logos and trademarks for several reasons:

  • It is clean and simple (which also makes it easier to load)
  • It is sharp (which also makes it easier to see on a mobile screen)
  • It retains elements, and colors, from the prior version — so the change is not terribly shocking
  • The sleeker design uses less bandwdith and reproduces more easily on a small screen without distortion or being hard to read

Last year, NETFLIX revamped its logo with similar effect. The new logo was not loved, but that was not the point. It took the old logo and made it sharper and easier to load on mobile screens, which are a rapidly growing percentage of brand interactions. Foursquare and Airbnb also underwent similar revisions recently.

 

Google

Last week, I received a new trademark solicitation regarding a trademark registration renewal. The company calls itself “Patent & Trademark Office” with an address in New York, NY. See the image of their mailing that I scanned below.

The document could easily be mistaken as coming from the government – the “Patent & Trademark Office” name, the look and feel of the document, and the official looking bar code.

Their “fee” of $975 is not cheap. And it is not clear what services they provide? Is this a Section 8 renewal, or 8 and 15? Do they provided legal advice about which renewal is appropriate, and whether the mark is in use or in use for all the goods and services in the registration? Are they attorneys and members of the bar?

If this was a legitimate service at a reasonable value, why would they mask who they are, and why would they choose the clearly deceptive name of “Patent & Trademark Office”?

Their website appears to be patenttrademarkoffice.us, but the domain was not working when I checked it this week.

Beware of such scams. Read the fine print. Contact your attorney. Report scams to the FTC and USPTO.

For more information, see:

BRNF14744_014757_001 BRNF14744_014758_001