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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

TPAC Quarterly Meeting Summary – February 2014

Posted by ipelton on: March 7th, 2014

The Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA last week on Friday, February 28, 2014. Erik M. Pelton & Associates staff member Nick Santucci attended in person. The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting:

New (TPAC) Members this January

  • Anne Chasser (Returning for another term)
  • Deb Hampton (Returning for another term)
  • Bill Barber (New TPAC Member)

Deputy Director’s Comments – Michelle K. Lee, USPTO Deputy Director

  • The USPTO was named number one out of 300 agency subcomponents in the 2013 Best Places to Work in the Federal Government rankings released in 2013 by the non-profit Partnership for Public Service.
  • Now that the USPTO has made it to the top of the list, the goal in 2014 is to figure out how to stay there.

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

  • Unlike many issues in Congress, IP protection consistently receives bipartisan support.
  • Copyright Issues
  • SOPA and PIPA created a high hurdle for any future proposal for statutory changes to copyright law.
  • Patent Issues
    • President’s State of the Union Address, January 28, 2014
    • “…let’s pass a patent reform bill that allows our businesses to stay focused on innovation, not costly and needless litigation.”
    • Lots of of White House, Congressional, and USPTO activity surrounding abusive patent litigation legislation.
  • Trademark Issues
    • Marks Consisting of Flag, Coat of Arms, and Other Official Seals
      • H.R. 3713 – “To amend the Trademark Act of 1946 to provide for the registration of marks consisting of a flag, coat of arms, or other official insignia of the United States or of any State or local government” (Rep. Jeffries, D-NY-8, introduced 12/12/2013).
      • S. 1816, Sen. Klobuchar, D-MN (introduced 12/12/2013 – Senate Companion)
    • Non Disparagement of Native American Persons; H.R. 1278 – “Non-disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013” (Faleomavaega, D-AS) & 19 cosponsors (introduced 4/15/2013)
    • Trademark Caucus forming in Congress
  • Opening USPTO satellite offices in Denver, Dallas, Detroit, and Silicon Valley.
  • USPTO to keep all fees it collects for FY 2014.

Budget Update – Tony Scardino, CFO

  • Full year appropriations bill signed January 17, 2014
  • USPTO funded at 3.1% above FY 2013 level
  • FY 2014 fee collections through January 31, 2014: $89.4M (Trademarks)
  • FY 2014 spending January 31, 2014: $101.5M (Trademarks)
  • FY 2013 Performance and Accountability Report can be accessed: http://www.uspto.gov/about/stratplan/ar/

Trademark Operations Update – Deborah Cohn, Commissioner for Trademarks

  • 30 Trademark Examining Attorney’s hired, 15 to start in March 2014 and 15 in May 2014
  • USPTO to hold identification of goods and services “boot camp” for examining attorneys
  • Trademark Expo to be held at the USPTO on October 17-18, 2014
  • USPTO to hold roundtable on April 11, 2014 on proposed rulemaking allowing post-registration changes to identifications of goods and services

Policy Update – Sharon Marsh, Deputy Commissioner for Trademark Policy

  • Surprisingly few people use IdeaScale to comment on USPTO proposed rulemaking

TTAB Update – Gerard Rogers, Chief Administrative Judge

  • The 2014 revision of the TBMP will be out in June
  • The TTAB is on target for meeting all of its 2014 goals

Trademark Next Generation Update – Raj Dolas, TMNG Portfolio

  • Examining attorney software will shift to entirely web-based access
  • Successfully deployed Trademark Reporting and Datamart 1.3 in December 2013
  • Release included refinements to employee productivity and form paragraphs

Upcoming TPAC Meetings

  • Friday, June 20, 2014
  • Thursday, October 16, 2014 (Thursday so as not to conflict with the Trademark Expo beginning on October 17)

Handouts from the USPTO Trademark Public Advisory Committee meeting on February 28, 2014

TPAC Quarterly Meeting Summary – October 2013

Posted by ipelton on: October 29th, 2013

The following is a summary of some of the key points discussed at this month’s meeting of the Trademark Public Advisory Committee (TPAC) of the USPTO. I was in attendance in person at the USPTO headquarters in Alexandria, Virginia. The handouts from the meeting are available in PDF below.

TPAC photo

Departing Members

  • Three members of the Committee were at the final meeting of their term. They were thanked for their service and provided certificates of appreciation.
    • Ann Chasser
    • Deb Hampton
    • Cheryl Black

CFO UPDATE – Tony Scardino, CFO

  • The USPTO continued operations during the government shutdown based on their ability to spend fees collected from prior to the end of the last fiscal year.
  • The trademark reserves are bigger than the patent reserves.
  • The USPTO is currently operating in FY2014 on a continuing resolution which funds it until 01/15/2014.
  • The budget for FY2015 has been present to O.M.B.
  • The USPTO’s Draft 2014-2018 strategic plan was recently released. Public comments can be submitted until 11/25/2013. There will be a public forum on the strategic plan on 11/05/2013.
  • Trademark revenue in FY2013 was $264m.
  • Trademark spending in FY2013 was $226m.
  • trademark operations has an operating reserve of $156m.

TRADEMARK OPERATIONS UPDATE – Commissioner Deborah Cohn

  • In FY2013, trademarks met or exceeded all of its performance goals.
  • 79% of trademark filings are now handled completely electronically without any paper incoming or outgoing.
  • The USPTO will be working in the next year to continue to try to increase the number of all electronic filings.
  • There are currently 409 trademark examiners, and the equivalent of 389 full time examiners.
  • An update to the TMEP will be released on 10/30/2013. It will include a section on handling #HASTAG trademarks along with other updates.
  • The USPTO’s draft examination guide on gTLD trademrsk is currently up for comment on IdeaScale.
  • The ID manual is being redesigned. The USPTO is also looking to update the descriptions in rapidly changing industries such as social media and is discussing with outside constituents.
  • There is a new tool available called “ID Assist” in the online TEAS applications that helps check whether an ID is acceptable.
  • The USPTO has posted a request for comments on changes to post-registration identifications based on changes in technology. Comments are due by 12/01/2013.
  • The electronic Official Gazette was deployed on 09/24/2013 and has been well received.
  • The USPTO’s public outreach on trademark issues continues. A new 42 minute video has been released “Trademark Basics: What Every Small Business Should Know Now, Not Later

INTERNATIONAL AND POLICY UPDATE – Sharon Marsh, Amy Cotton

  • An examination guide on internet specimens for service marks will be out soon
  • The Section 8/15 specimen pilot program related to possible “deadwood” on the register is still ongoing; the USPTO will review and report once all the information is received.

TTAB UPDATE – Chief Judge Gerard Rogers

  • 49 precedential decisions were issues by the Board were issued in FY2013 (22 were ex parte / 27 inter partes).
  • The number of new TTAB cases increased in FY2013.
  • The Board has made progress on decreasing the pendency of final decisions and motions.
  • 6 ACR cases were decided in FY2013.
  • Board will host a roundtable on 12/03/13 on “end to end processing” of Board appeal and trial cases. More details will be announced soon.

OCIO UPDATE – Raj Dolas & John Owen & Marcie Lovett

  • Progress on TMNG (‘trademarks next generation’) with internal and external systems continues

 

TPAC Meeting Slides – October 2013

TPAC Quarterly Meeting Summary – July 2013

Posted by ipelton on: July 12th, 2013

Here is a summary of some of the key points discussed at this week’s meeting of the Trademark Public Advisory Committee (TPAC) of the USPTO. While, I did not attend, representatives from our firm did. The handouts from the meeting are available in PDF below

LEGISLATIVE UPDATE – Dana Colarulli, Director, Office of Gov’t Affairs

Recent heraing on patent and copyright issues

White House issued a “Patent troll” package of proposals – 5 white house executive actions and proposed 7 legislative actions

Bill introduced to exempt USPTO from sequester; administration is reviewing and has not taken a position yet

  • “Redskins” bill – HR 1278 – “Non Disparagement of Native American Persons or People in Trademark Registration Act of 2013”
  • New Secretary of Commerce – Penny Pritzker – sworn in last week
  • Ray Chen – former PTO solicitor – nominated to Federal Circuit – approved by judiciary committee, pending full senate vote

CFO UPDATE – Tony Scardino, CFO

  • Fee collections on Trademark side are very close to projections (below by 1.5%)
  • Expenditures were further below projections ($13.5M) due to sequestration
  • FY14 Budget: Virtual certainty that USPTO will operate on a continuing resolution at FY13 levels
  • Sequestration affects USPTO:
    • Spend 5% less in FY 2013 budget
    • Estimated $13.5 of Trademark fee resources will be unavailable to be spent
    • Still do not know exactly what it means for FY14

TRADEMARK OPERATIONS UPDATE – Commissioner Deborah Cohn

  • Performance related Data – Close to or meeting most targets
  • E-Gov – percentage of apps processed end to end electronically. Currently 79%.
  • No longer measure percentage of applications filed electronically because it is now above 98%
  • Application filings are on target for the estimate of 4.3% growth above last years filings
  • 412 Examining Attorneys as of end of May, including 29 recent hires
    • Planing on hiring similar size group in FY2014
  • Pendency
    • First Action pendency – 3.0 months – right on target
    • Pendency to Disposal – If include suspended and interpartes cases, average 12.3 months. If you exclude suspended/inter partes, it moves down to 10.5 months.
  • Efficiency/Cost – target cost is $621 per disposal. Currently $543 per disposal; 12.6% better than target.
  • TMEP was recently updated
  • New Exam guides on Geographical Certification marks posted to IdeaScale for comments recently
  • Examining Attorney training-
    • Periodic training for EA’s – recently completed advanced 2(d) training. Mandatory for every EA. Planning to have a more robust training program, which cycles through the primary substantive issues on a regular basis.
    • INTA coordinated training on gTLDs. Part of ongoing effort to educate employees on important issues affecting TM owners, even if not directly related to examination.
    • Next week (July 18), holding annual Industry Training Day. Held in conjunction with INTA to have industry experts come in and speak to examiners. Focusing on entertainment this year. Reps from Fox, WWE, and others will be coming in.
    • Next workshop is on configuration marks.
  • Electric Official Gazette (eOG)
    • Beta launched recently, will be posted until end of August
    • Still posting PDF version of Gazette for now as well
  • Outreach to Stakeholders and the Public
    • Held ABA Day (April 24) – speakers on topics that USPTO does not usually discuss such as Letters of Protest. Planning another event last year.
    • Continuing INTA Roundtables – 25 people discussion groups, around the country. Going to Richmond, Minneapolis, NYC, and St. Louis. More to follow.
    • Craig Morris has been leading initiative to conduct education and outreach to the public and has been speaking to many groups, including:
      • Business schools. When he asks a room whether they have a business plan, everybody raises their hands. But when he asks if it includes a TM component, the hands drop. He also stresses the importance of getting TM counsel.
      • Also speaks to SCORE organizations who do training for small business owners. Speaking to SCORE in Charlottesville in the next week

INTERNATIONAL AND POLICY UPDATE – Sharon Marsh, Amy Cotton

  • Madrid Protocol
  • New members:
    • India became full member of Madrid on July 8th
    • Rwanda will become participating member on August 17.
  • Madrid Goods and Services Database
    • Large WIPO project
    • Goal is to have national offices go in and identify those that are acceptable for level of specificity.
    • Translating into 10 languages and should become a very valuable resource for those with Madrid Applications.
  • Online ID Manual: Recent feature is a new status ‘X’ which you can exclude with Boolean logic. We’ve only begun the large task of identifying them.

TTAB UPDATE – Chief Judge Gerard Rogers

  • TTAB Filings statistics – current projection is that appeals, extensions to oppose, and oppositions will be higher than last Fiscal Year. Cancellations will be just about the same.
  • TTAB Dashboard: http://www.uspto.gov/dashboards/TTAB/main.dashxml
  • TTAB New Filings & Pendency Measures: http://www.uspto.gov/trademarks/process/appeal/TTAB_New_Filings_and_Performance_Measures.jsp
  • Total Pendency (end-to-end) – measure of average total pendency from commencement to completion of various categories of cases.
    • Appeals– 50.9 weeks, down from last year’s 76.8 weaks
    • Trial Cases  – 187.4, down from 203.3 weeks last FY.
    • ACR Trial Cases – 98.7 wks, down from 140.8 last FY.
  • Pendency to Final Decision – hand out has cumulative 3 quarter average of 20 weeks, but the most recent quarter for this year was down to 13.9 weeks and we hope to keep that up for Q4
  • Pendency for Contested Motions – Average pendency currently appears to be going up over course of year, but that’s because Board has focused on working off older cases.
  • The makeup of the inventory has changed. As of July 1 Board is down to only 1 case that is older than 6 months; back in January there were a few dozen. Goal is to have none over 6 months and only several that are older than 14 weeks. Should allow pendency to shrink even quicker.
  • Inventory at end of Q3 – 200 contested motions waiting to be decided. Target is to get down to 170 by end of FY.
  • ACR: Transcript from last year’s ACR roundtable has been posted. Posted email address (acrsuggestions@uspto.gov) for anyone who would like to offer additional comments on the roundtable discussion.

 OCIO UPDATE – Raj Dolas, Porfolio Manager

  • TEAS Petitioner template enhancement to be deployed 7/12
  • Infrastructure upgrade – TESS and XSearch migrated to IPV5, Post-deployment issues resolved
  • TEAS Form Enhancement – Tenative 8/17 deployment date
  • Trademark ID Manual Enhancements –  Updates to ID checker and IDML editor (tentatively) scheduled for deployment this weekend 7/12. Added “X” status for original IDs (not from suggested IDs)
  • Electronic Office Gazette:
    • Can filter by many fields and even select fileds to display in layout
    • Ability to play audio and display motion marks
    • Can save results of any page in either PDF or XML. Can share a link to displayed results. Can even go directly to ESTTA to file an opposition or extension of time to oppose.
    • Permits keyword search by particular data element
    • Building “collections” – Check off particular records as you review the result to add them to collection. Then you can download or send link that includes only records added to collection.
    • Address: http://eog-test.etc.uspto.gov/

The next TPAC meeting will be Friday, October 18, 2013.

Trademark Public Advisory Committee – Handouts 2013-07-09

TPAC Quarterly Meeting Summary – March 2013

Posted by ipelton on: March 5th, 2013

Last Friday I attended the quarterly public meeting of the USPTO’s Trademark Public Advisory Committee.The following is summary of the key items discussed.

Legislative Update (by Dana Colarulli)

  • With the new Congress, there has been lots of hill activity
  • TPAC was included in the recent AIA technical corrections legislation – the change gives TPAC more flexibility in appointment terms
  • Expecting the USPTO to testify in April in oversight hearing

Trademark Operations Update (by Commissioner Deborah Cohn)

  • The percentage of “Excellent Office Actions” continues to be at an excellent level
  • Trademark Operations received a “gold medal” from the Department of Commerce recently for the “Excellent Office Program” for providing a better customer experience
  • 78% of applications are handled entirely electronically
  • Comments on filing fee changes are being reviewed and a proposal will be forthcoming
  • Filing increase in FY2013 thus far is on par with expectations
  • 30 new Examining Attorneys were hired recently; 16 just began working and 14 more will begin in a few weeks
  • Examination pendency is on target
  • Comments received regarding possible shortening of Section 8 timing were largely negative; the possibility is on hold for now, pending results and data from the Section 8 specimen 2 year pilot that is underway
  • TSDR is going to be enhanced today (ed. note: not sure if enhancements are live yet)
  • TEAS was upgraded and enhanced recently
  • A few ID manual changes are upcoming, including a way to check in TEAS applications whether the IDs are in the approved manual
  • USPTO has reached out to stakeholder groups to get input on several complicated industry specific ID areas
  • USPTO has held roundtables in multiple cities recently with INTA member groups
  • WIPO Global Brands Database was recently launched; includes USPTO searches
  • TMEP updates: next one will be in April
  • Official Gazette no longer distributed in print; enhanced electronic OG will be testing soon and hopefully completed by the end of the fiscal year; USPTO sought input from user groups

OCIO Update (Marcie Levett (filling in for John Owens)  / Raj Dolas (project director TMNG)

  • Added capability for new application serial numbers beginning with ’86’
  • Many ‘Trademarks Next Generation’ (TMNG) projects ongoing

International and Policy Update (Sharon Marsh)

  • Post-registration specimen pilot project underway; about 450 (out of 500) office actions have been sent so far; registrants have 6 months to respond
    • Hopefully will have some data to report by end of the year
  • Four countries have recently become members of Madrid Protocol; USPTO has worked with them to provide assistance

CFO Update (Tony Scardino)

  •  AIA technical collections act confirmed that there is a “Trademark Fence” – a statutory prohibition on spending Trademark related revenues on non-Trademark operation
  • Revenue is slightly below estimate, spending is slightly above expected; TM operating reserve of $126 million, and is fully sufficient to cover it
  • current continuing resolution for budget ends March 27th
  • FY2014 budget plans and process are under way

TTAB Update (Chief Judge Gerard Rogers)

  • Recent staffing increases: 4 new judges, 3 new staff attorneys, a lead paralegal
  • TTAB webpage just updated, now includes section with “Stakeholder Outreach” information and links
  • Continuing efforts to enhance and improve the ‘TTAB Dashboard'; working to collect more information going forward
  • Number of cases operating under the old rules is down to about 150
  • Filings of new proceedings at the TTAB are mostly up slightly

Next meeting – Tuesday, July 9th, 2013