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TPAC Meeting Summary – February 2015

Posted by ipelton on: March 2nd, 2015

Last 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 (while I was not in attendance, associates and intern from the firm were):

This was the first TPAC meeting of Commissioner Mary Boney Dennison since taking her post in January. Three new (or returning for new terms) members were introduced: Jonathan Hudis, Jody Drake, and Tim Lockhart.

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

  • Quite a bit of activity (hearings and proposed bills) recently on capitol hill related to IP issues, particularly patent and copyright issues

USPTO Budge Update – Frank Murphy (Deputy Chief Financial Officer)

  • Reduction of certain trademark fees implemented January 17, 2015; impact has been anticipated
  • FY2016 budget released in February. Includes using some funds from USPTO operating reserves.
  • FY2016 includes plans for to hire 37 net trademark examining attorneys.
  • FY2016 budget includes a decrease in the IT spending for Trademark Next Generation.
  • USPTO is conducting a bienniel review of all its fees, including some proposals to adjust trademark and TTAB fees.

Trademark Operations – Commissioner Dennison

  •  Application filings thus far in FY2015 are up more than 7% over the prior year
  • New trademark application fees and electronic filing option took effect January 17, 2015
  • The TM-5 group is working on some new collaborations
  • USPTO will be hosting their annual meeting in November

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

  • Two recent round tables were held, one on ESTTA and the other on possible rules changes
  • A proposal for possible rules changes could be issued in the near future

USPTO TPAC Agenda – February 27, 2015

The USPTO announced last week, at the TPAC meeting, that it will begin sending notices via email to trademark registrants about upcoming deadlines for Section 8 declarations of continued use (due between the 5th and 6th anniversary of the registration) and Section 9 renewals (due every 10 years after registration).

Since these renewals will be sent via email, trademark registrants can only receive them if they have a valid email address on file with the USPTO.

The USPTO’s formal announcement is here: USPTO to Issue Courtesy Email Reminders of Registration Maintenance Filing Deadlines

TIP: Trademark registrants who obtained a USPTO trademark registration without having counsel, it would be wise to check the TSDR records and make sure that the correspondence information lists a valid email address. If no email address is listed, Registrants can file a “Change of Correspondence Address” electronically with the USPTO to include an email address and to check the box authorizing email communications.

 

TPAC Meeting Summary – October 2014

Posted by ipelton on: October 17th, 2014

The Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA yesterday on Thursday, October 16, 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:

Chair –Maury Tepper

  • It is a very busy week at USPTO as the Trademark Expo takes place Friday and Saturday
  • It is the final meeting for three members whose terms end in December this year. Each of the three was presented with a plaque
    • Ray Thomas, Jr.
    • Jody Drake
    • Linda McLeod
  • This is also the final meeting for Commissioner Debbie Cohn, who is retiring at the end of the year after more than 30 years of serving the USPTO. She was given a book of notes from TPAC members and a standing ovation.

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

  • Chair of the House Subcommittee of Subcommittee on Courts, Intellectual Property, and the Internet – Howard Coble – is retiring. So there will be a new leader of the subcommittee next Congress
  • If Republicans win the Senate, Chuck Grassley (R-IA) would take leadership of the Committee on the Judiciary
  • Congress has been quite inactive, at least in enacted legislation, in this 113th Session compared to recent Sessions
  • HR 5108 – Law School Clinic Certification Program – for expansion and establishment as a permanent program, rather than a pilot. The bill has passed the House, and will likely be acted on soon by Senate.
  • Congressional Trademark Caucus – officially launched Sept. 2014.
    • INTA very involved
    • First Event –Trademark Expo Amplification on October 9, 2014
    • Moran entered a statement in the Congressional Record regarding the Trademark Expo
  • Several hearings earlier this year on copyright issues.
  • Continuing to monitor activity on patent related issues.
  • President last week mentioned patent issues in a speech.
  • Some discussion regarding legislation on trade secrets, and still possible that something gets done on the topic this year.
  • Silicon Valley office of USPTO will open in Spring 2015, Dallas office at end of 2015

Shira Perlmutter (Director for International Affairs) & Dominic Keating (Director, IP Attaché Program)

  • IP Attachés are diplomats based abroad who are IP experts. They have four main activities:
    • Advocate with the host governments on IP issues
    • Train (judges, prosecutors, customs, policy officials, etc) host government officials on IP matters
    • Build support for US IP positions with public outreach
    • Assist US stakeholders to appropriate resources
  • The Attachés have access to resources and staff at USPTO
  • 11 Attachés currently, based in 8 countries
    • 2 in Geneva (covering TRIPS/WTO and WIPO/UN issues)
    • 3 in China
    • Brazil
    • India
    • Russia
    • Bangkok
    • Mexico City
    • Kuwait City
    • Soon, someone will be going to Brussels to cover E.U.
    • Future office in Lima (covering the Andean region) likely; South Africa possible in the future
  • Funded by USPTO fee revenue (55% trademarks, 45% patents)
    • Recently examined the current division of work done in FY2013, about 42% of the work was attributed to trademark issues
  • Director Perlmutter noted that they are looking for ways to make sure the program reaches smaller businesses, not only those involved in INTA and US Chamber of Commerce
  • During the week of December 15th, 2014 there will be meetings in DC and USPTO with the Attachés and USPTO, other government officials, and stakeholders

Trademark Operations – Commissioner Cohn

  • 7% applications are processed completed electronically from start to finish.
  • FY2014 filings: 455,017 application classes filed. Remarkably close to the expected target of 455,000 and up 4.9% over FY2013 (433,654)
  • USPTO is forecasting another increase of about 5% for FY2015.
  • Percentage of Exceptional office actions for FY2013 exceeded the goal.
  • See slides for more details regarding pendency and other measurements.
  • TEAS and TEAS+ filing discounts of $50 will go into effect soon. Final rule will be published in November, which will set the implementation date which is currently expected to be in January 2015.
  • 10 year Renewal fee will go from $400 per Class to $300 per Class when filed electronically.
  • TMEP update will be published at end of October incorporating recent examination guides and some other developments.
  • Trademark Next Generation (TMNG):
    • Large portion of effort going into FAST, the tools used by Examining Attorneys.
    • New Identification of Good and Service Manual will be deployed in beta form soon.
    • Reminder notices for renewals and Section 8 periods will go into effect in January 2015. Reminders will be sent on the first day of the eligible filing period to those who have authorized email communication from the USPTO
  • Section 8 Specimen review pilot project. More than 50% were not able to show use on all the goods or services.
    • Roundtable will be on December 12, 2014. It will be webcast. Public can speak and comment during the roundtable.
  • Amendments to ID based on changes in technology. Proposal has been posted on website. Allowances for changes are relatively limited and conservative. Comments open until November 3, 2014.
  • Outreach initiatives:
    • The USPTO (Craig Morris) has reached out to more than 40 organizations in the last year to discuss the importance of trademarks.
    • Stakeholder outreach: continuing to work with INTA, ABA and others.
    • Trademark Expo: Friday and Saturday this week. Lots of exhibitors and lectures and seminars. Opening ceremonies Friday at 10am.
    • International outreach: TM5 forum. Working on harmonized ID list available in one source to seek ID available in all the jurisdictions. tmfive.og for more information

USPTO Budge Update (Tony Scardino – Chief Financial Officer)

  • A year ago, we were in the midst of partial government shutdown.
  • FY2014 trademark fees collected were $275.7 million, 1.0% below estimate.
    • 6% above FY2013
    • 7% above appropriation level
  • Fee collection category breakdown provided in the slides.
  • Section 9 fees projected to decline 28% in FY2015.

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

  • Pendency down for both Ex Parte and Inter Partes cases.
  • Filings of new appeals and inter partes cases were up in FY2014.
  • New Deputy Chief Judge, Susan Richey.
  • Revisions to TBMP are expected to be published online soon, and will be more searchable (similar to the USPTO’s TMEP).
  • Outreach:
    • ABA program at USPTO last month featured live hearing.
    • Also held hearings this year at Fordham, Boston Patent Law Association, and more.
  • In FY2014:
    • 406 appeals decided
    • 131 trial cases decided
      • 21 of the trial cases decided involved some form of ACR
    • 45 precedential decisions issued in FY2014
    • More details and statistics regarding the pendency and case inventory contained in the slides
  • Note: The report was did not feature data on the overall duration of the average appeal or inter partes case, a number that has been reported in the past.

OCIO/Trademarks Next Generation update – John Owens (CIO) and Raj Olas (TMNG)

  • Focus of projects is shifting from internal examiner capabilities to capabilities for external users.
  • New ID Manual (beta) demo
    • Will feature new search options, display options, and functionality.
    • Beta will be live at the end of October.
  • See slides for more details on recent and upcoming projects.

NEXT MEETING: Friday, February 27, 2015

 

USPTO Trademark Public Advisory Committee handout October 10, 2016

TM Expo photo

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