The USPTO is seeking comments on its Draft 2018-2022 Strategic Plan. More details and the plan itself can be found here. Comments are due by Sept. 20, 2018. Our firm submitted the following comments today:

Comments of Erik M Pelton & Associates, PLLC regarding DRAFT 2018-2022 STRATEGIC PLAN UNITED STATES PATENT AND TRADEMARK OFFICE

The following are the comments of the firm of Erik M. Pelton & Associates, PLLC® of Falls Church, Virginia, in response to the Draft 2018-2022 Strategic Plan of the U.S. Patent and Trademark Office (“USPTO”). The August 14, 2018, draft was made available at https://www.uspto.gov/about-us/performance-and-planning/strategy-and-reporting.

About Erik M. Pelton & Associates, PLLC

Erik M. Pelton & Associates, PLLC (“EMP&A”) is a boutique trademark law firm located in Falls Church, Virginia. Established in 1999 by Mr. Pelton following two years of working for the U.S. Patent and Trademark Office as a trademark examiner, EMP&A has registered more than twenty-five hundred U.S. trademarks for clients who are overwhelmingly small businesses. The firm has represented dozens of small business plaintiffs and defendants in all phases of trademark disputes and Trademark Trial and Appeal Board opposition and cancellation proceedings. EMP&A attorneys are actively involved in the International Trademark Association (INTA) and the American Bar Association’s Intellectual Property Law section (ABA-IPL).

Trademark Next Generation

The draft 2018-2022 Strategic Plan of the USPTO contains few details regarding improvements to trademark operations. Specifically, it contains almost no details regarding plans or expenditures related to technology enhancements and the “Trademark Next Generation” program, which is now several years old.

The technology improvements to trademark operations have been long delayed and over budget. While there have been some useful improvements in recent years (to the ID manual, Official Gazette, and TSDR), much work remains to be done. The USPTO has been working on the TMNG project for more than seven years. See USPTO Commissioner’s blog from March 22, 2010, at https://www.uspto.gov/blog/director/entry/trademarks_next_generation.

Both pro se filers and experienced counsel would benefit tremendously from mobile formatting of USPTO systems; a more robust TTAB online docketing and filing system; enhancements to T.E.S.S. queries and results; visual searching possibilities; enhanced searches of Office Actions, Office Action responses filings, and TTAB filings; and much more. As a whole, the trademark systems would be greatly improved by more user-friendly interfaces that are not clogged with copious amounts of text and instructions. Similarly, USPTO filing receipts for trademark matters are cumbersome, unduly lengthy, and difficult for novice users to comprehend or use.

Ensuring that system outages are negligible and that data is accurate is, of course, extremely important as well. A recent message on TSDR (http://tsdr.uspto.gov) pages that “Trademark owners should not rely on the Post Registration Maintenance Tab to determine their maintenance obligations and deadlines” is alarming.

The Fiscal Year 2017 annual report of the Trademark Public Advisory Committee (“TPAC”) noted that:

The TPAC is disappointed in the continued delay in the development and implementation of Trademark Next Generation (“TMNG”). This delay is particularly troublesome given the escalating costs to develop and implement TMNG. The latest cost estimate is almost five times higher than the original projection and the TPAC is concerned that, given the history of TMNG, the latest estimate of over $260.7 million (not including the cost of the Trademark Trial and Appeal Board portion) may still prove to be low.

TRADEMARK PUBLIC ADVISORY COMMITTEE ANNUAL REPORT 2017 (“TPAC FY2017 Report), available at https://www.uspto.gov/sites/default/files/documents/TPAC_Annual_Report_2017.PDF  at p. 2.

Examiners at the USPTO have also suffered from the delays and difficulties with TMNG. Completion of the desktops tools to be used by hundreds of trademark examiners has been repeatedly delayed for multiple years. See TPAC FY2017 Report at p. 17.

While upgrading and modernizing these ‘legacy’ systems is no doubt difficult and time consuming, the delays to date have been dramatic with an impact on examiners, users, and the public benefit of a robust trademark register. Furthermore, the expenditures to date have repeatedly surpassed budget.

The 2011 estimate for developing TMNG, including its TTAB component, was $53 million. The TPAC’s Annual Report for FY 2016 noted that the total projected cost had then ballooned to $202 million through the end of FY 2018, not including the TTAB portion, which was then being re-estimated. The USPTO’s latest estimate is that the total cost of TMNG, including post-FY 2018 spending but again not including the TTAB portion, will be at least $260.7 million. (The “Budget and Funding Issues” section below provides a more detailed breakdown of the relevant figures through FY 2018.) As a result, the latest estimate is almost five times higher than the original projection which, as the TMNG history suggests, may prove to be low.

TPAC FY2017 REPORT at p. 18.

While much has been accomplished regarding TMNG and no doubt dealing with a patchwork of legacy systems has been more challenging than originally planned, much remains to be done. It is our opinion that the Strategic Plan ought to include more detailed targets and goals for IT enhancements for trademark users. The current draft makes scant mention of any specific goals, plans, deadlines, or metrics for TMNG and other technology improvements to benefit trademark examiners, trademark systems, TTAB systems, or external users. As mandatory electronic trademark filing is likely in the next year, and as the online systems are the backbone of trademark operations and the main conduit for external filing and communication with the USPTO, the Strategic Plan ought to cover these topics with greater detail.

Scams and solicitations targeting trademark filers

The Draft makes no mention of the continuing scams and solicitations faced by trademark filers. Multiple operators take the USPTO’s public data and send them worthless and/or overpriced offers that confuse recipients. With names like, GLOTRADE; Patent & Trademark Office; Patent and Trademark Institute; and Trademark Edition, Ltd.; many of them look like they could be from a government agency. The Strategic Plan ought to include (A) details on plans to continue to educate trademark owners about such scams and solicitations, and (B) coordination with law enforcement and other agencies to combat these scams. Given the confusion that they cause, these scams are impacting the integrity of the system, the trust of the public in the USPTO, and the pocketbooks of the victims.

Taken as a whole, these solicitations impose great costs on the trademark registration system. The majority of trademark owners are small businesses, for whom the costs of trademark registration and maintenance are significant. The misinformation and confusion caused by these solicitations negatively affects the ability of trademark owners to make informed choices about the management of their trademark rights. Every dollar spent in response to a solicitation is a dollar not spent on effectively managing one’s trademark portfolio or growing one’s business.

Furthermore, these schemes dilute the messaging from the USPTO and the value of legitimate trademark services. A decision not to renew a registration or file a new application based on the costs, whether real or perceived, of a solicitation undermines the accuracy of the Register. At this moment, perhaps a nadir in public trust of government institutions, the integrity of the trademark register is more important than ever. Limiting public access to trademark data is not a viable option and warnings have proven ineffective. Instead, we implore the agencies here today to work together to stop these scam operations from preying on unsuspecting trademark owners.

While the trademark division has worked in recent years to combat these scams, the goal should be to eliminate them, or to significantly squash them. The Strategic Plan would be an appropriate place to reference this issue and target a significant reduction in their impact on trademark users. At a minimum, increased funding and staffing for enhanced coordination with the Department of Commerce, Federal Trade Commission, Small Business Administration, U.S. Postal Service, and other agencies to combat this issue would be welcomed by trademark users.

Conclusion

Thank you for the opportunity to comment on the Draft Strategic Plan. We look forward to seeing the final version of the USPTO’s 2018-2022 Strategic Plan that addresses the concerns raised herein.

Respectfully submitted,

/ErikMPelton/

Erik Pelton

Erik M. Pelton & Associates, PLLC®

 

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