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TPAC Meeting Summary – July 28, 2017

Posted by ipelton on: August 4th, 2017

I was unable to attend last week’s meeting of the Trademark Public Advisory Committee. However, our firm attended the public meeting and obtained a copy of the slides from the presentations. See below.

Discussion topics included:

  • TMNG / IT enhancement progress
  • Pendency and performance
  • Upcoming rulemaking regarding an expedited cancellation proceeding on grounds of abandonment and/or nonuse
    • comments on on 82 FR 22517 due by August 14
    • Stakeholder roundtable will be held on September 25
  • USPTO budget forecasting

Trademark Public Advisory Committee – meeting slides July 28, 2017 by erik5733 on Scribd

 

TPAC meeting summary – May 2017

Posted by ipelton on: May 12th, 2017

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, as reported by Associate John C. Heinbockel:

  • The Office is in good fiscal shape: Paid fee classes have increased 7.5% over the previous fiscal year, and the Office currently has about 4 months of operating reserve saved in the event of a budgetary/funding crisis.
  • The Office is working hard to eliminate paper filings: Currently 99.7% of all applications are submitted electronically, but fewer are completed entirely electronic throughout the application process. Commissioner Dennison is now personally calling some applicants that submit on paper to find out why.
  • The Office is adjusting to a new political climate: The Office was able to get in all its hiring for the fiscal year before the hiring freeze (now lifted) was put in place. The Office will look very carefully at its hiring needs in the future. The Office has also established a “regulatory reform” working group and is considering expanding its operating reserve beyond the current four months.
  • Plain language and clarity: The Office is serious about improving the clarity of its trademark information systems for pro se applicants. The Office has simplified the language in the filing declarations. For example, the USPTO recently reworded the TEAS filing form button labeled “Save Portable Data” to “Save Form.” The Office also recently rolled out a “Maintenance” tab on TSDR to clearly display deadline dates for filing renewal documents.
  • Trademarks Next Generation is a mess: The Office has been talking about its upgraded computer and information systems, Trademarks Next Generation, for years, and progress has been very slow going. The Office is now in Phase 2, which involves rolling out Examining Capabilities that were deferred from Phase 1. But there appear to be many problems, including a text editor so dysfunctional that the Office is considering scrapping it (after years of development) and going to an “off-the-shelf product such as Microsoft Word.” The Office has still not identified all its user requirements and is also having problems with data corruption.
    • The Office knows it: There is a new portfolio manager in charge of TMNG, and the Office has brought in consultants from Ernst & Young to independently review the TMNG program.
    • It’s not all bad news: The Office has put a lot of effort into the myUSPTO platform, which continues to deploy new enhancements. myUSPTO now allows users to track applications and registrations on the same docket and will soon be able to handle up to 1000 applications/registrations. myUSPTO will also roll-out a simple Gazette monitoring service later this summer. There is also a trademark notification app available via GitHub that pushes notifications about status changes on tracked applications.
  • Fraudulent solicitations in the cross-hairs: In the wake of several convictions related to fraudulent trademark solicitations, the Office is continuing efforts to protect consumers. There will be a round table held on July 26, 2017, to which the Office has invited representatives from the FTC, Customs & Border Patrol, US Postal Inspectors, the SBA, and the DOJ. The Office has also reached out to its international partners in the TM5. Warnings about fraudulent solicitations are now more prominent in USPTO filing receipts, and the Office includes similar warnings to applications and registrants at almost every step of the registration process.
  • TM5 Bad Faith Filings: The Office is also working with its partners in the TM5 to minimize bad faith filings. There is TM5 meeting open the public on this topic on May 21, 2017, at INTA in Barcelona.
  • Too early to judge impact of new TTAB rules: After new rules went into effect in January, it’s too early to measure what impact the rules will have pendency statistics. Since the rules were put in place, Extensions of Time to Oppose are down, but Judge Rogers thinks this is a normal fluctuation, rather than a consequence of the new fee. There are a number of ESTTA changes upcoming that should bring efficiencies, however, including increased automated institution of cases and additional form questions that will limit filing of untimely motions.
  • New Nonuse and Abandonment Proceedings are in development: The Board has drafted a Request for Comments that is being cleared concerning a new streamlined cancellation proceeding for handling abandonment and nonuse claims. These proceedings would be expedited reviews of very limited issues and could be resolved in as many as 170 days (40 days to answer, 40 days for rebuttal, 90 days to decision). Discovery would be limited to standing, and proceedings could be converted to full cancellations if evidence of use is produced by the respondent. There are still, however, many issues to work out. Discussions with stakeholders continue.

TPAC SLIDES May 5, 2017 USPTO Trademark Public Advisory Committee by Erik Pelton on Scribd


June 2016 TPAC photo via @USPTO on Twitter https://twitter.com/uspto/status/741340495054528512

 

TPAC Meeting Summary – January 2015

Posted by ipelton on: January 16th, 2017

On Friday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA.  The handouts/slides 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 the first meeting for two new members, Eileen Tannen and Brian Winterfeld. For their bios, see TPAC page here.

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

  • The 115th Congress just began, and it is difficult to predict legislation for now.
  • The current budget “Continuing Resolution” runs through April 28, 2017. It is quite possible that the rest of the fiscal year will also be via a continuing resolution.
  • The USPTO provided testimony on December 7, 2016, in a hearing on”Time and Attendance Abuse at the USPTO.”

 

International Policy – Amy Cotton

  • Ms. Cotton provided a ‘tour’ of the USPTO’s work in South America, including their work on issues such as
    • Chile food labeling law.
    • Geographic indicator issues in several counties.
    • Establishing contact with the Cuban intellectual property office.
    • Brazil’s plans to join the Madrid Protocol.

Trademark Operations – Commissioner Mary Boney Dennison

  • Trademark filings in FY2016 represented 530,270 classes.
  • For FY2017, the USPTO in projecting filings to increase 7.5 percent.
  • There are 517 Examining Attorneys, with an additional 44 starting in January.
  • 77% of Examining Attorneys telework.
  • The telework act is set to expire at the end of 2017; USPTO is making contingency plans in case it is not renewed.
  • Customer experience improvements are being implemented following report from Deloitte, including the hiring of two plain language writers, and a Chief Customer Experience Officer.
  • 99.7% of application filings are made electronically.
  • 85.6% of applications are handled entirely electronically end-to-end.
  • Trademark fee changes went into effect on January 14, 2017.
  • The USPTO’s pilot program to permit some post-registration identification changes based on technology changes has received 97 petitions since September 2015.
  • USPTO hopes that a final rule-making regarding the “deadwood” proof of use will be published before January 20th. If it is not published this week, it may get held up in the change of administrations.
  • Revised declaration formatting will be displayed on electric filings.
  • USPTO continues to work on possible expedited cancellation proceedings based on non-use.
  • The Commissioner noted that the USPTO continues to take steps to attempt to warn users about and crack down on scams targeting trademark applicants and registrants.

USPTO Budge Update – Tony Scardino (Chief Financial Officer)

  • Not a lot to report given the time of year and the change in administrations this month.

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

  • Judge Ellen J. Seeherman retired in December.
  • Robert H. Coggins is the newest TTAB judge.
  • TTAB filings increased last year, and additional increases projected for FY2017.
  • New TTAB rules went into effect on January 14, 2017.
    • TTAB Slide summarizing changes here.
    • Complete Federal Register notice here.
    • January 2017 TBMP Revision here.
  • Judge Rogers indicated that the Rules revisions may lead to fewer ACR cases since some ACR features are now incorporated in the rules for all cases.

OCIO / TMNG Update  John Owens and Rob Harris

  • The rollout of new Examiner computer systems is ongoing.
  • eFiling enhancements are not expected until the end of FY2018
    • No mention was made of improvements to T.E.S.S. or mobile formatting of USPTO web trademark systems.

The next TPAC meeting is scheduled for May 5, 2017.

 

USPTO Trademark Public Advisory Committee slide – January 13, 2017 by erik5733 on Scribd

TPAC Meeting Summary – September 2016

Posted by ipelton on: September 20th, 2016

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:

USPTO Director Michelle Lee visited at the of the meeting to address the committee. The meeting also marked the end of the TPAC term of three members of the committee: Deborah Hampton, Bill Barber, and Ann Chasser.

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

  • There has been a lot of activity on the hill lately for IP.
  • Trade Secret legislation was signed by the President on May 11, 2016.
  • There is pending legislation related to the ‘Patents for Humanity’ program.
  •  There was a celebration on the hill on Sept. 14, 2016 celebrating the 70th anniversary of the Lanham Act.
  • Director Lee testified in an oversight hearing on Sept. 13, 2016. Video below:

International Policy – Shira Perlmutter and Amy Cotton

  • Ms. Perlmutter gave a presentation regarding the possible trademark implications of the European Union “Brexit.” Much is still unknown and multiple exit scenarios exist. The exit will have ramifications for registration and for enforcement in England and the EU.
  • Ms. Cotton gave a presentation regarding a TM5 project to develop a taxonomy and hierarchy for all goods and services. This could include US identifications and affect international filings and foreign applicants/registrations filing in the US. The USPTO intends to circulate a survey in the future regarding some of the issues involved.

Trademark Operations – Commissioner Mary Boney Dennison

  • Filings in FY2016 are up over 5%
  • There are currently more than 500 examining attorneys
  • 22 new examiners will begin on 10/31.
  • New examiner groups will likely be hired in the winter and in the spring
  • Deloitte was contracted by the USPTO trademark operation to review customer service. Their report has been finalized and the USPTO will launch some new initiatives as result in the near future.
  • The fee changes proposed earlier in the year should be published in a final rulemaking soon with implementation in January 2017.
  • A final rulemaking regarding the proof of use requirements for Section 8 filings will be issued shortly.
  • An update to the declaration format for online filings is planned for early 2017.
  • The USPTO is considering a limited expungement proceeding to help eliminate deadwood on the register and is currently working with user groups to develop proposals.
  • The USPTO website, as a result of a TM5 project, now includes common status descriptor icons that all TM5 offices will be using.
  • The Trademark Expo will be in DC on October 21 and 22 at the Mellon Auditorium.

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

  • USPTO expects to begin FY2017 under a Continuing Resolution

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

  • The latest TTAB pendency statistics were reviewed (see slides), showing that pendency times in general continue to decrease.
  • New proceeding filings at the TTAB are up considerable in FY2016, including Notice of Opposition filings up 11%.
  • New TTAB Judge Christopher Larkin begins work this week.
  • The TTAB rulemaking package will be issued this month, with an effective date of January 14, 2017.
    • The new rules will apply to all cases, with judges having discretion where needed in applying them to pre-existing cases.
    • Judge Rogers noted that the new rules retain the Board processes considered significant by the Supreme Court last year in B&B Hardware.

OCIO / TMNGUpdate  Raj Dolas

  • New trademark examining attorneys are beta testing the new Examiner computer systems.
  • my.uspto.gov is live now for users.
    • Users create a login and create their own home page choosing from a variety of widgets.
    • Widgets include adding application/registration numbers to view current status, and a function to create an automated search of the Official Gazette.
    • TPAC members expressed interest in seeing the development of TTAB and Assignments widgets.

The next TPAC meeting is scheduled for January 13, 2017.

2016-09-16 TPAC Slides by Erik Pelton on Scribd

TPAC Meeting Summary – February 2016

Posted by ipelton on: February 15th, 2016

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 committee was meeting for the first time in 2016 and FY2016.

  • New chairperson: Dee Ann Weldon-Wison
  • New members:
    • Mei Lan-Stark
    • Lisa Dunner
  • Other members:
    • Jody Drake
    • Ann Chasser
    • Timothy Lockhart
    • Jonathan Hudis
    • Deborah Hampton
    • William Barber (vice-chair)

OCFO Budget Update (Frank Murphy, Deputy Chief Financial Officer)

  • The FY17 budget was released by the White House last week.
    • Includes hiring of 63 new trademark examiners and 1 TTAB administrative judge.
    • Decreases IT funding from FY16 by $4.6 million.
  • The FY16 budget currently estimates $279.8 million in trademark fees.
    • Trademark fees through 12/31/2015 were down 1% over the prior FY.
  • The USPTO is already beginning to plan or the FY18 budget.
  • USPTO is currently drafting the notice of proposed rule making (NPRM) regarding fee increases, and it will be published in the spring.
    • The rulemaking is anticipated to have an effective date of January 2017.

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

  • Commissioner Denison testified on February 11, 2015, regarding the HAVANA CLUB trademark issues.
  • There is unlikely to be any real movement on legislative issues in this presidential election year.

Trademark Operations – Commissioner Mary Boney Dennison

  • Major USPTO power outage event in December was not caused by an IT issue.
    • It affected all USPTO computer systems.
  • Pendency goals meet on exceed targets.
  • Q1 FY2016 filings were up 12.6% over the prior year.
    • USPTO is predicting a 7% increase in filings for the entire fiscal year.
  • USPTO has seen a 3% increase (to approx. 84%) in number of applications that are prosecuted entirely electronically from start to finish.
  • TEAS RF accounts for approximately 50% of all new applications.
  • There are 474 Examining Attorneys currently, approximately 85% of them telework full time
    • 43 new attorneys were hired in FY2015.
    • USPTO plans to hire 60 in FY2016 (20 began in November, and other 20 or so start this month).
  • USPTO recently hired Deloitte Consulting to help examine and improve customer service.
  • Fee increase proposal
    • A 60 day comment period will follow the NPRM this spring.
    • Some changes to the proposals have been made following feedback in the fall.
  • Post-registration amendments to identifications due to technology evolution:
    • Since September 1, 32 petitions have been received.
    • 11 examples have been posted by USPTO.
  • Post-registration use pilot update: the pilot, which studied the actual use of marks for their registered goods upon filing of Section 8 renewals, will be the subject of an upcoming proposed rulemaking to make random audits of Section 8 filings a permanent practice, as well as to increase the solemnity of the Section 8 affidavit.
    • The USPTO is still considering other options including a shortened expungement proceeding.
  • The USPTO has conducted several “Trademark Tuesdays” featuring live video chats with interested users at the USPTO’s regional offices.

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

  • The TTAB currently has 23 Administrative Judges and 13.5 interlocutory attorneys.
  • TTAB new case filings are up the first quarter of FY2016 over the numbers from prior year, and expected to remain up throughout the fiscal year.
  • Details regarding current pendency measurements are in the slides (below).
  • Notice of Proposed Rulemaking featuring a new Rules packaged is expected to be published in March. There are four main goals/elements:
    • Leverage the use of technology and electronic communications.
    • Remove plaintiff’s obligations to serve notice on the defendant.
    • Discovery changes, including encouraging earlier completion of discovery and moving the deadline for filing a motion for summary judgment to prior to the first date to serve pre-trial disclosures.
    • Add trial testimony efficiencies, for example allowing parties to submit testimony by affidavit (instead of deposition) but subject to possible cross-examination.
  • The Board will be doing outreach this spring regarding the new rules.

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

    • Explained the details regarding the power outage, and recovery, in December.
      • No data was lost, unless there was a transaction “in process” at the time of the outage it is possible that it was not recorded.
      • Eventually, all systems will be moved to the cloud as that reduces vulnerability. But ‘legacy systems’ cannot be moved to cloud.

Trademark Public Advisory Committee meeting slides | Feb. 12, 2016 by Erik Pelton