I recently attended the Trademark Public Advisory Committee‘s (TPAC) quarterly public meeting on October 12, 2012 at the USPTO in Alexandria, Virginia. The following is summary of the key items discussed. See below for the handout materials provided, which include more details about the “dashboard” filing and pendency numbers for trademark operations and the TTAB.

One new member has been appointed to TPAC – Dee Ann Weldon-Wilson of Exxon Mobil. In addition, one member returns for a new term appointment, Kathryn Barrett Park.

Budget Update by Frank Murphy, Deputy CFO

• Trademarks finished the fiscal year with $249M in revenue, close to the projections. Spending ($232M) was also near the estimate.
• USPTO is still operating on a “continuing resolution” at FY2012 appropriate levels. There is a chance of “sequestration” coming up which would result in across the board budget cuts. Unlikely that anything will change prior to the Presidential election coming up.
• The initial draft of the FY2014 was submitted to OMB in September, and the USPTO expects to complete the budget to submit to Congress in February 2013. The USPTO is currently taking comments regarding the possible adjustment of trademark fees, and if any changes are proposed the CFO will need to look at how these affect the budget numbers.

Legislative Update by Dana Colarulli

• USPTO is watching several bills that affect intellectual property, including:
• Saving High Tech Innovators from Egregious Legal Disputes (SHIELD) – software patent litigation
• Fashion design bill – has been passed out of Senate Judiciary committee; not sure it if will go any futher
• PLT and Hague treaty implementation – passed by Senate
• AIA technical corrections

IP Attaché Program by Shira Perlmutter

• The USPTO has a program providing Intellectual Property Rights (IPR) Attachés overseas in certain locations
• The program launched in 2006 formally but has been growing recently
• Been met with a lot of support and success
• The role of the attachés is to promote IP interests for the benefit of US stakeholders; advocate with host governments; provide education to officials, judges, examiners, and others about US IP rights; and monitor IP developments “on the ground” in the post locations
• NOTE: there is additional information about the program, its goals, and the various posts at http://www.uspto.gov/ip/global/attache/index.jsp

Trademark Operations by Commissioner Debbie Cohn

• In FY2012, USPTO trademark operations met or exceeded all of its goals for quality and pendency.
• Trademark filings (by number of classes) was up 4.1% in FY2012.
• At end of FY2012, there are 1.8 million active registrations.
• USPTO hired approximately 34 trademark examining attorneys in FY 2012, planning to hire approximately 26 in FY 2013, beginning with a group in January.
• Looking into ways to enhance the ID manual usability, including some type of “ID checker” in TEAS forms and an “ID Filter” that would narrow the list of IDs in the ID manual to exclude those that have been created based on specific applicant requests for TEAS+ usage
• The TMEP now has enhanced search capabilities.
• The last print Official Gazette for trademarks will be issued on 12/25/2012. USPTO expects to have a new electronic gazette by the end of FY2013. Two focus groups covering the new OG have already been held.
• TSDR 2.0 was released in October with more features. Links from TARR redirect to TSDR.
• USPTO Currently accepting comments regarding (i) fee adjustment possibilities to increase use of electronic filing and communications, and (ii) possibly moving up the time period for submitting Section 8 and 71 affidavits of continued use.
• USPTO continues to encourage use of Ideascale for comments to TMEP and to draft examination guides.
• USPTO continues stakeholder outreach, including roundtables with INTA around the country and discussions with students, business owners, and the public via Craig Morris’ office.
• The “TM5” (formerly “Trilateral Group”) will be meeting in Barcelona at the end of October

International & Policy Update by Sharon Marsh, Deputy Commissioner for TM Examination Policy

• Collection of data about registrations and specimens of use is underway following the USTO rule change that took effect last summer. Very limited sample thus far, the project will take some time.

TTAB Update by Chief Judge Gerard Rogers

• Opposition and cancellation filings were up in FY2012, though not quite as high as the levels prior to the latest recessions.
• TTAB issued approximately 43 precedential decisions in FY2012.
• Recently hired three new interlocutory attorneys and four new judges, the majority of whom will begin working in November.
• Six examining attorneys are now assisting judges to review and summarize the record in cases with particularly large records.
• The judges and interlocutory attorneys are working to standardize some of the templates and formats they use.
• Outreach by TTAB: Recently participated in a program at UNH, in an ABA webinar and will e participating at the AIPLA conference.
• TTAB will be hosting a roundtable on ACR on October 30, 2012.
• TTAB is working to make TBMP easier to update and easier for users to navigate.
• TTAB is working on updates to the TTAB Dashboard data and displays.

OCIO update by John Owens

• TARR and TDR have officially been retired and replaced by TSDR 2.0.
• Emails featuring “notice of publication” in the Official Gazette now feature a direct link to the relevant page with the mark.
• Working on replacing the payment/financial system used by the trademark users to provide more features.

Next public TPAC meetings:

• March 1, 2013
• June 14, 2013

TPAC Agenda 2012-10-12

The following is a summary of the key points discussed at the July 13, 2012, public meeting of the Trademark Public Advisory Committee (TPAC) at the USPTO, as reported by Associate Mark Donahey who attended in person.

 I.                    CHAIRMAN’S UPDATE

Chairman Tepper recognized two TPAC members whose terms will expire in September: James Connolly and Kathryn Barrett Park.  He presented both with plaques in recognition of their service to the committee.

II.                  CFO UPDATE

The OCIO is currently planning the FY14 budget and revalidating FY13 budget to make sure it is still the amount the PTO needs.  The OCIO is also planning for the possibility of operating on a continuing resolution in 2013 because it has become the status quo in Washington. There is also uncertainty about what will come out the work of Congress and the administration to meet the requirements of sequestration.   Trademarks has $100 million in carry-over funding which will help manage the uncertainty.  There were no questions from the committee or the public.

III.                COMMISSIONER’S UPDATE

Performance Measures – Commissioner Cohn reported that most performance measures are progressing or on target, such as final action compliance, exceptional office actions, eGovernment, and disposal pendency.  Post registration amendment and correction had been one area of concern, but the management and staff there have pushed to get things back where they should be.  The Commissioner complimented Tiffany Huntly, Robert Maple, Susan White, and others for their hard work on this issue.

New Applications and Hiring – USPTO had projected a 3.6% increase in application filings over last year, but application filings are currently up over 5.3% above the prior year.  They have been increasing since 2010, and the Commissioner hope that persists. At end of 2011, Trademarks began hiring again for the first time since 2007.  They hired 34 new examiners and plan to hire 26 more in FY13.  However, they are ready to reevaluate if conditions change.

Outreach – The Commissioner reported on efforts targeted at stakeholders and the general public.  Stakeholder outreach efforts include roundtable discussions held in collaboration with INTA at locations around the country.  These are advanced level discussions with practitioners and other stakeholders.  The Commissioner invited suggestions for good places to hold these events in the future.  Outreach efforts are also trying to reach members of the general public who may not know anything about trademark protection.  The hope is to reach them at the beginning of the process of starting a businesses when basic TM information would be most valuable.  Craig Morris has been spearheading this effort with speaking engagements around the country, including the National Veterans Small Business Conference Expo, the North Carolina Small Business Development Center, and the SBA Annual Conference (this week).  Chairman Tepper encouraged everyone in the community to help Mr. Morris identify individuals or organizations that may be helpful in these outreach efforts.

Identification Manual – The Office hosted a roundtable in February about possible improvements to the manual. One suggestion was to get more current information from industry groups so that current terminology can be added to the manual quicker.  USPTO is starting work with INTA and industry groups now in hopes of establishing an ongoing process for updating the manual.  There is also a fairly long term project to restructure the manual itself based on some feedback and suggestions received from Examining Attorneys. For example, this FY they hope to add an option to the manual that allows users to filter out identifications that were submitted by users and see only the terms that were originally included in the manual.

Confusing Third-Party Solicitations - As reported at the previous TPAC meeting, the office sent a cease and desist letter to the U.S. Trademark Registration Office (“USTRO”) demanding that they stop mailing confusing solicitations to applicants and registrants.  The Commissioner reports that USTRO responded and has been cooperative.  They told the office that they have stopped, and the office hasn’t heard any other complaints from the community.  Let the office know if your clients receive any other confusing solicitations from the USTRO or another entity.  In addition, the Office added a warning on the website and started including a warning on an insert that accompanies newly issued registration certificates.   The latter seems to be very effective because it often arrives at about the same time a solicitation would.

Trademark Expo – The Trademark Expo is scheduled for October 19-20, 2012, and planning is under way.  Last year there were approximately 35 exhibitors, and about 15,000 visitors walked through.  There will be 37 exhibitors this year.  Information is on the Trademark website.

IV.                INTERNATIONAL & POLICY UPDATE

Sharon Marsh briefed the committee on the post-registration pilot project to gather additional specimens of use for selected registrations.  The pilot started last week and will proceed in the manner described in the recent rulemaking.  It will be limited to approximately 500 registrations over the next 6 months, which will be less than 1% of all Sec. 8’s over that period.  The pilot is conducted by 5 senior attorneys working closely with post-registration staff.  They will review Sec. 8 filings to make sure they meet the requirements, and they will require submission of proof of use for 2 additional identified goods and/or services.  Registrant has 6 months to respond.  If the response is insufficient, those items will be deleted.  If Registrant fails to respond at all, the registration will be cancelled in its entirety.  The office is using the pilot to collect data to assess the accuracy of the register.  The results will be shared with TPAC when they are ready.  Any questions about the pilot may be directed to TMpostregpilot@uspto.gov.

V.                  TTAB UPDATE

Staffing Changes – Chief Judge Rogers reported that since Cheryl Butler has started as the TTAB’s Senior Attorney and editor of the TBMP, the Board has already posted a revised version of the TBMP online, and Ms. Butler is working with the managing attorney to keep pace with pendency, to assist the Chief Judge with rare motions (such as disqualification of counsel), and to help with rulemaking.  In addition, Ken Soloman is the Board’s new Managing Attorney, and Deborah Decker has moved to a new position with the Board.

Vacancy Announcements - The Chief Judge is reviewing applications for available ATJ positions.  The Board received 45 applications from the most recent announcement.  They hope to hold interviews and send recommendations to the director in the next few weeks to forward to the Commerce Department.  The Board is authorized to fill 2 positions, but there is a pending request to fill more.  They will do so as soon as it is approved.  In addition, the Board recently posted an announcement seeking applications for additional interlocutory attorneys.  The announcement closes July 25.  There is also a future possibility that the Board will seek applications for a new quality review position that would review work done by paralegals and customer service reps.

Statistics – If the number of Appeals, Extensions, Oppositions, and Cancellations filed in Q4 is about the same as Q3, 2012 will end with slightly more filings than 2011.  The Board is facing challenges keeping up with final decisions.  Cases maturing to “Ready for Decision” (“RFD”) are projected to be 659 this year, but the Board is only projected to decide 500 of these cases by the end of the year.  Though this is a 10% increase over the previous year, the backlog will still rise.  The Board’s additional hiring is intended to respond to this.

The Chief Judge also notes that the average time from Issuance to RFD is still creeping up as a byproduct of working off old cases.  Eventually it will reach a tipping point and start declining.  The Board hopes to be down near 300 cases waiting for decision by the end of the year. 

In addition, the statistics for end to end pendency are highly skewed by a few very old cases that had been decided recently.  This is illustrated by the difference between the average and median end to end pendency.  Average appeal pendency for Q1, Q2, and Q3 were 73.7, 98.2, and 67.4, respectively.  The Chief Judge noted that the dramatic rise in Q2 was due in large part to 6 cases appealed in 2000 that were all suspended from 2001-2010 because of a related cancellation proceeding.  However, the median appeal pendency for the same quarters (48, 53, 53) is more consistent because it is less affected by these outlier cases.

Finally, there are only 200 cases left that operate under the old rules.  About half are suspended or are on appeal. The Board is actively managing the other half to push them through.

[NOTE: for statistical details, see TTAB New Filings and Performance Measures dashboard]

Accelerated Case Resolution – No ACR cases were decided in the most recent quarter, but others are in the pipeline.  The Board has decided 7 ACR cases so far this year, and they hope to decide three more by the end of the year.  The bar has been slow to adopt ACR, and it often takes a sales job for the client and the other party to agree to it.  More often it is adopted later in the proceeding.  For example, an Interlocutory Attorney may contact parties after they file Motions for Summary Judgment to tell them that they aren’t very likely to result in disposition of the case.  At that point they may decide to adopt ACR.  The Board will continue to promote ACR through its outreach efforts.

Addressing Backlog – The Board is hiring judges.  In addition, Judges and Interlocutory Attorneys are developing templates to use in decisions. Idea was inspired by OHIM Board, which makes great use of templates.  Currently ATJs have their own templates based on work they did in the past, but now we want to standardize those.  The Board is also launching a program that would permit Examining Attorneys to do rotations with the TTAB to prepare memos in support of ATJs as they review the records in cases and other groundwork.  Examining Attorneys have just finished applying to take part.  Initially it will only be three or so Examining Attorneys that rotate through in the first round.

VI.                OCIO UPDATE

Legacy Systems –CIO John Owen described the ongoing difficulties with some antiquated and aging legacy applications relied upon internally by trademark operations, such as XSEARCH and TICRS.  OCIO is working on ways to get these systems running reliably on the new laptops that have been successfully issued throughout the other elements of the PTO, but these systems have not been supported by Microsoft for 5+ years and they are highly sensitive to network latency.  OCIO recently tested a work around, but it failed for an unknown reason, which OCIO is still investigating. Mr. Owen emphasized how these persisting issues with legacy trademark systems underscore the importance of the Trademarks Next Generation (TMNG) system currently in development.  Mr. Tepper commented that he will readily acknowledge that these are very complicated problems, but everyone will agree that having these systems not work is simply not an option.  Therefore, having a backup plan in place yesterday would be a good idea.

TMNG – Raj Dolas, the TMNG Portfolio Manager, outlined the progress being made on various elements of TMNG.  For example, a number of user interfaces proposed by prospective venders have been evaluated, and the selected vendor is being broad on board.  In addition, the release of TSDR 2.0 is planned for this August, featuring backward compatibility with TARR static links.  They are also preparing to introduce the Electronic Official Gazette, which will replace the printed version.  OCIO is looking for user input on what features they would like to see it have.  TMNG’s platform and infrastructure improvements are largely on track.

The next public TPAC meeting will be October 5, 2012.