This morning, the Trademark Public Advisory Committee (TPAC) met at USPTO headquarters in Alexandria, VA. I was unable to attend the meeting in person, but streamed the entire meeting on video. The following are the highlights of the presentations and discussions.

Current TPAC Membership roster:

  • William G. Barber – chair
  • Elizabeth Escobar – Vice Chair
  • Brian Winterfeldt
  • Ileen Tannen
  • Donna Tobin
  • Anne Gilson LaLonde
  • Stephanie Bald (new member)
  • Chris Kelly (new member)
  • Kelly Walton (new member)

Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO), Laura A. Peter

  • Since partial government shutdown, the USPTO has been functioning as normal using reserve fees collected prior to 12/22/2018
  • In absence of appropriations, USPTO cannot access any of the fees collected since 12/22/2018
  • Current estimate is that reserves will fund patent operations until at least the 2nd week of February 2019
  • Current estimate is that reserves will fund trademark operations until at least mid-April 2019
  • USPTO is evaluating ways to conserve funds in the interim to possibly extend these dates
  • In event of a shutdown of operations, small staff would continue to work to receive both electronic and paper applications, and PTAB and TTAB filings, and payments, and to maintain IT infrastructure
  • USPTO’s overall IT status: still reviewing applications to for the CIO position; maintaining current systems and scheduled updates; in midst of a complete review of current and planned projects and recommendations for going forward, including evaluation of success of TMNG and consider whether to continue plans or update them; hope to have decisions shortly
  • Mandatory electronic filing rule: to save time and money, aim to make process fully electronic end-to-end; publication and implementation of new rule planned for later FY19; will make electronic filing mandatory and mandate that all communications be electronic
  • Foreign filings rule: awaiting OMB clearance, delayed by shutdown; would require foreign applicants to be represented by a licenses US attorney
  • Looking to hire over 100 more trademark examining attorneys this year

Trademark Operations Update – Commissioner Mary Boney Dennison

  • 61 new ex attorneys last fiscal year; hiring approximately 110 this fiscal year
  • 77% telework full time
  • Predicting 6.1% growth for FY19 over FY18, however:
    • Filings in Q4 FY18 were down 0.2%
    • Filings in Q1 FY19 down 1.1%
  • December first action pendency 3.4 months; more employees are now examining (managers, etc)
  • Will push for the final rule on mandatory electronic filing as soon as OMB is reopened
    • there are a few exceptions (international agreements; filings for smell, flavor, etc)
  • – new widget; TEAS Plus Short Form
  • U.S. Counsel Requirement for foreign applicants: waiting on OMB
  • Brunetti Case – argument expected at Supreme Court in April 2019
  • Proof-of-use audit: 48% of registration with a response filed deleted some goods or services; 70% of respondents are represented by an attorney
  • Unauthorized changes to correspondence records
  • Misleading solicitations – in 2019, extending the attorney detail with DOJ to continue work on criminal prosecutions
  • Improving customer experience
    • Implemented two touchpoint surveys
    • Two more coming
    • Planning on “dramatically improving our website”
    • Improved TESS guidance pages, and other new/improved pages as well
  • China – dramatic increase in last 3 years in US applications from China
    • 1% of all classes filed in FY2018 were from China
  • FY18 overall growth: 15% of it was from China
  • 1400 certificates last week without goods/services in them
    • fixing problem that led to it
    • replacing certificates, starting to mail them out

Office of Policy and International Affairs update– Amy Cotton

  • Summarized OPIA’s trademark goal and priorities for FY2019

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

  • New members on Senate Judiciary Committee
  • Awaiting final membership list for House Judicial Committee
  • Targeted measures addressing trademark and copyright legislation are being discussed
  • PTO legislative priorities
    • Continuity of operations
    • Elevating IP attache rank
    • Coordination of copyright policy functions
  • Trademark issues taken up could include
    • Create a presumption of irreparable harm (re: injunctive relief) in trademark infringement cases)
    • Consolidation of TTAB appeal at Federal Circuit
    • Bill on state seals and insignia
    • USPTO technical amendments

Financial Update – Tony Scardino

  • FY2019 status
    • Appropriation for USPTO lapsed 12/22/2018 at 12:01am
    • USPTO continues to collect fees
    • Has operating reserve that it can spend
    • But cannot spend the fees collected since 12/22/2018
    • FY2019 2.1% increase at end of Q1FY2019
  • FY2020 budget
    • Typically, president’s budget is release in February
    • May be delayed due to partial government shutdown
    • 2018-2022 USPTO Strategic Plan was published November 29, 2018
    • In midst of required biennial fee review

TTAB update – Gerard Rogers, Chief Administrative Judge

  • 22 Administration trademark judges currently
  • Planning to get back to 24, waiting on Commerce Department to sign off on some recommended hires
  • In Q1 FY2020, Ex Parte notices of appeal rose 7.5%
  • Two recent retirees has led to a decrease in number of contested motions and cases decided on the merits in Q1 FY2019
  • Simplified consent motion form will block people out if the period expired over a weekend/holiday and then try to file on next business day; can still file as a general filing and attached a schedule
  • IT updates coming in April
    • Will fix problem identified above
    • Will allow “save session” for notice of opposition when opposing multiple applications
  • Standard Protective Order
    • Seeking comments on ideascale by March 31st
  • Expedited Cancellation Pilot Program
    • Request for comments on “streamlined” process published in May 2017
    • Pilot is identifying possible cases with only nonuse or abandonment issues
    • 75 identified
    • 12 cases joined pilot

IT Update – David Chiles, Acting CIO; Robert Harris, Acting TMNG portfolio Manager

  • I wish I could understand most of what was said. I did not. Instead, I captured all the slides. See below.
  • Still beta testing updates for examiners
    • Phase 2 of beta testing delayed

NEXT MEETING Scheduled for Friday April 26, 2019

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