Last week, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA. While I was unable to attend in person, I was able to watch the video. Here is a rundown of key things covered in the meeting discussion:

New members introduced by William Barber:

  • Elizabeth Escobar
  • Anne Gilson Lalonde
  • Donna A. Tobin

Joseph Matal, Performing the non-exclusive duties and functions of the USPTO Director

  • New USPTO Director sworn in this week on Thursday, Andrei Iancu
  • Director Iancu delivered brief remarks, and spoke to the importance of trademarks.

 Trademark Operations – Mary Boney Denison, Commissioner for Trademarks

  • Continuing Resolution just signed by President
  • If any future shutdown of government, USPTO should be able to stay open and operating
  • 18 new examining attorneys started in January
  • 40+ expected between new hirings coming in March and May
  • Next Fiscal Year, expected that filings will rise again and approximately 80 examiners could be hired
  • Meeting all pendency and quality goals
  • 9% of new applications are filed electronically
  • 4% of applications are electronic at every step of the way; USPTO continues to try to increase that number
  • MyUPSTO – can store searches and email notifications then there are TMOG matches
  • Working on a simple application for word marks
  • ID Manual can be downloaded in a variety of formats (but be careful of using latest version when it is updated)
  • Mandatory E-filing – proposed rulemaking will be published soon; implementation likely in late 2018
  • Regulatory reform – proposed to remove Interference proceedings at TTAB
  • Brunetti decision – decision regarding possible rehearing en banc is pending; awaiting guidance from Office of the Solicitor
  • Decluttering of Federal Register: increased readability of Declaration; continued random audits of renewal filings; exploration of expedited cancellation proceedings
  • Fraudulent Solicitation – “we are doing as much as we can to raise awareness of trademark owners”
    • Several criminal prosecutions made last year
    • Hosted roundtable last year
    • Interagency working group
    • Sending USPTO lawyer on detail to DoJ shortly
  • New five-year customer experience plan
    • Two new “Plain language” writers now working
    • Working to “dramatically improve our website”
  • Unauthorized changes to correspondence addresses – working on MyUSPTO so that email alerts regarding such changes (see my blog post on this Amazon Brand Registration Issue for discussion of this issue)
  • Influx of Chinese Filings – recent trends show a great increase; concern over legitimacy of these applications and subsequent registrations
  • Concern of fake specimens in general, they are getting more sophisticated
    • USPTO is going to set up an email mailbox soon so that users can alert USPTO to possibly fake specimens

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

  • USPTO director approved by Senate recently and sworn in
  • 5th Continuing Resolution signed; goes until March 23, 2018
  • Shutdown interruptions to USPTO are minimal generally
  • IP issues in 115th Congress, Second Session likely to be dominated by copyright issues
  • Telework Enhancement Act Pilot Program (TEAPP) Extension authority expired Dec. 8, 2017; new bill extending the program through 12/31/2020 is pending
  • WIPO World IP Day 2018 will be celebrated April 26, 2018

Policy and International UpdateShira  Perlmutter, Chief Policy Officer and Director for International Affairs

  • The Hague Project – proposed convention issues regarding trademarks; US at this time has sought to exclude IP from the convention
    • Two options: exclusion; or inclusion but with terms that address US concerns about exporting IP laws from one country to another, and could exclude injunctive relief altogether on IP claims
    • Still to decide whether agency decisions would be included in the convention
  • Federal Agency Counsel – proposed statutes control of agency names and logos; USPTO has objected in the past because they circumvent the trademark system
  • USPTO has hosted, and plans to host again, training for other US government agency attorneys
  • Monitoring ICANN / WHOIS developments

OCFO Update – Tony Scardino, Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting USPTO Deputy Director

  • Trademark fee estimate for FY 2018 – $336.3M, an increase about about 10 percent
  • Through 12/31/2017, fee collections up 13% over prior fiscal year
  • USPTO fee setting authority set to expire 9/16/2018, USPTO working on extension or solution

TTAB Update Gerard Rogers, Chief Administrative Trademark Judge

  • Susan Ritchey retired (Deputy Chief Judge), currently in process of hiring replacement
  • Judge Jeff Quinn retired; not replacing him immediately
  • Q1 FY2018 – Extensions of time to oppose up 6%, Petitions to cancel up 15%, Notices of Opposition up 5%
  • More cases being commenced doesn’t necessarily mean more decisions required from judges
  • Standard Protect Order – TTAB sought comments and received 3
  • Recent decision – untimely motions for summary judgment will not be considered
  • Nonuse Cancellation Proceedings – creation of new streamlined proceeding still under review
  • Some ESSTA enhancements coming this spring; will feature better calendaring and public view of calendars; new form for consented extensions; new form to relinquish an extension that is moot due to settlement

OCIO Update – David Chiles, Acting Chief Information Officer & Robert Harris, Acting TMNG Portfolio Manager

  • TMNG Examination product used by Examining Attorneys; been working on document editor
    • See slide image below for some of the obstacles and issues they are working on
    • Final beta testing scheduled for Spring 2018
  • TMNG ID Manual – enhanced with sort, preferences, and other options
  • Manatory electric filing scheduled to Q4FY18/Q1FY19
  • ERIK’S COMMENT – These updates generally feature very little discussion of what has gone wrong, why so many delays, what the costs are, and how the full long term TMNG is being implemented. TPAC members made no questions on these issues during the public TPAC session. There was no discussion of the process or progress of hiring a new CIO. The 2017 annual report of TPAC goes into some detail on these difficulties.There was no mention of the Dept. of Commerce Inspector General’s ongoing audit (apparently announced in January 2017). The delays and costs are staggering. The annual report states:
    • “The USPTO has been working on Trademarks Next
      Generation (“TMNG”), an advanced, cloud-based IT system to
      perform end-to-end trademark processing, for over seven years.
      The USPTO now recognizes that its original goal of developing
      and implementing the system in four years or less was overly
      optimistic. Nevertheless, although the USPTO has identified a
      variety of reasons for the significant delay and increased cost, the
      TPAC remains troubled that this project has taken so long and cost
      so much.
    • “We note that the Inspector General (“IG”) of the DOC announced
      on January 3, 2017, that it is conducting an audit with the stated
      objective of determining whether the USPTO has provided
      effective program management of TMNG implementation.”
    • Not surprisingly, the extra years of development that TMNG has
      required—and may still require—have added exponentially to its
      cost. 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.”

The next TPAC meeting is scheduled for May 4, 2018.

Link to video :

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