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Posts Tagged ‘USPTO’

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16
Apr

USPTO trademark filings decrease in first quarter of 2013

Posted by ipelton on: April 16th, 2013

In recent years, the number of trademark application filings has increased at a small but stead rate. Is that trend reversing?  In the first three months of 2013, there were less application filings than the same period last year. However, there were more filings in the first quarter than in the last three months of 2012.

New trademark application filings at the USPTO:

  • First 3 months of 2013:  76,409 new applications filed
  • First 3 months of 2012: 80,724 new applications filed
  • First 3 months of 2011: 76,875 new applications filed
  • Last 3 months of 2012: 72, 457 new applications filed
  • Last 3 months of 2011: 72,461 new applications filed

[Note: All data retrieved via TESS search on USPTO.gov on April 12, 2013]

Related post: Trademark application filings in 2012 increased over 2011… by less than one percent

3
Apr

Anatomy of a “Petition for Make Special” requesting expedited handling of USPTO trademark application

Posted by ipelton on: April 3rd, 2013

Trademark applicants in the US can file a petition to expedite their application under certain special circumstances. The petition filing costs $100.

As for the requirements for such a petition, TMEP Section 1710.01 provides the details:

Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights.  A petition to make “special” is denied when the circumstances would apply equally to a large number of other applicants.

The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants.

The most common reasons for granting petitions to make “special” are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.

Here are two recent examples, from the public records of the USPTO, of filings of petitions to make special:

Serial No. 85870582 – Petition to Make Special

The filing here includes a declaration from the general counsel for the applicant and attaches screenshots featuring the allegedly infringing product. [Interesting note: this matter concerns the configuration of hot air popcorn popper]

 Serial No. 85862083 – Petition to Make Special

5
Mar

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

1
Mar

Sequestration impact on USPTO: $242 million, according to OMB

Posted by ipelton on: March 1st, 2013

According to a report yesterday from the Office of Management and Budget (OMB), sequestration will impact the USPTO to the total of $242 million.

See below for the page from the CBO report.  See here for the full 224 report.

I expect that today’s TPAC meeting is likely to feature some discussion of exactly what this cut will mean. Stay tuned – I will blog about the TPAC meeting in the coming days.

USPTO Sequester Page_001

28
Feb

Lessons learned from a nine year trademark application

Posted by ipelton on: February 28th, 2013

A client was recently granted a trademark registration more than nine years after the application was filed! The application for the MAIN STREET OF AMERICAN U.S. HIGHWAY 66 design (below) was filed in January of 2004. The registration was issued in February of 2012.

There are some valuable lessons to take from this example:

  • The potential length – and suspension of – an application is another good reason to use an attorney for the application process — it can be a long and complex process, and tracking the status alone can be a difficult and burdensome task.
  • An applicant who moves or changes email addresses during the application process may not receive important communications from the USPTO. [For this reason, our firm has used the same PO Box for many years - even though our physical space has moved several times.]
  • Perseverance is important. An application rejected or refused at first may still have a chance of being registered.
  • During the application process here, the USPTO address moved as well. And their online filing system was upgraded and changed several times.
  • The filing date of an application is important, and filing as early as possible is almost always advisable. Here, anyone who filed for a “confusingly similar” mark at any time after January of 2004 would have been behind this applicant in the queue at the USPTO.

78351039_001

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