Posts Tagged ‘TPAC’

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.
  • 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


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

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.