Last week, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA. I attended the meeting in person. Belows is a rundown of key things covered in the meeting discussion. The USPTO’s slides can be found a the bottom.

Director Andrei Iancu

  • Patent # 10 million issued last month
    • President Trump signed the patent in the oval office
    • IP and innovation are at core of our economic growth
  • ‘Walk of Progress’ in Alexandria displays patents on sidewalks

Trademark Operations Update – Commissioner Mary Boney Dennison

  • 892 employees – 7% of USPTO
  • 581 examining attorneys
  • 77% of examining attorneys telework
  • Hiring approximately 100 new examining attorneys in the next year
  • New application filings – since 1984, only 4 years of decline in filings
    • last fiscal year up 12%
    • so far this fiscal year up 10.4% (projected 8-9%)
  • Planning for mandatory electronic filing by early 2019
    • 99.96% of new applications filed electronically
    • 87.9% remain fully electronic throughout the process
  • IT improvements
    • TEAS now emails both new and previous correspondent when correspondence address of record is changed
    • Text it in owner section of forms reformatted and clarified
    • ID manual updated in April 2018
      • See results on one page
      • Factor for common alternate spellings of terms
      • trademark docket features
      • can store searches and receive notifications for Official Gazette
      • new widget coming this weekend: trademark form finder
        • identifies forms using plain language, including search box
      • upcoming widget: simple filing of intent to use word mark filed with TEAS PLUS
      • question from Erik – can data input to be subject to a FOIA request?
  • Mandatory electronic filing
    • Comments due by July 30
    • Implementation likely early 2019
    • Will save USPTO money and increase quality
  • U. S. Counsel Requirement – upcoming rulemaking
    • For foreign trademark applications
    • To address several issues regarding dubious specimens/applications
    • Proposed rulemaking for comments coming soon
  • In re Brunetti – extension to file a petition for cert to Supreme Court was granted until August 10, 2018
  • Proof of Use Audit program regarding Section 8 and 71 filings
    • 44% have deleted at least some goods or services
  • Misleading Solicitations
    • Continuing to warn applications and regsitrants during the trademark prosecution process
    • Two USPTO lawyers working at Department of Justice on criminal prosecutions
  • Customer Experience Improvement Initiatives
  • Specimen issues
    • Mock or fake specimen submissions increasing over last several years
    • Investigating digital forensic tools that examiners can use
    • Issue raised by fake specimens
      • Failure to show use in commerce?
      • Fraud?
      • Discipline by OED?
      • Impact validity of registration?
    • Public can report improper specimens (34 sent so far) to
  • TM5
    • TM5 annual meeting ins Seoul, South Korea, November 1-2, 2018
    • TM5 ID list search tool posted on the TM5 website (
      • Can also see the “T” indicator in USPTO online ID manual
    • Influx of filings from China
      • Large percentage from Shenzen
      • Many more small applicants with 1-2 marks than in the past

Policy and International Update – Shira Perlmutter, Chief Policy Officer and Director for International Affairs

  • EU GDPR regulations
    • Can only be enforced directly in EU courts
    • Studying impact on US businesses, and on EU nationals accessing services of US government including USPTO
    • WHOIS database – working to ensure continued access to WHOIS database; ICANN developing new model, USPTO working with others to try to ensure than new model provides maximum access to enforce IP rights
  • WTO report on Australian plain packaging requirements for tobacco
    • Report issued June 28, 2018
    • Australia’s labeling restrictions were upheld at the WTO

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

  • FY19 budget set for $3.37 billion in current appropriation passed by committee
  • Telework Enhancement Act Pilot Program (TEAPP)
    • Seeking extension to 12/21/2020
    • Attached to National Defense Authorization Act (H.R. 5887) which is likely to pass
  • Trademark Expo 2018
    • Res. 580 passed on July 18, 2018
  • Small Business Innovation Act of 2017 (H.R. 2655/S.791)
    • Passed both chambers on voice votes
    • Directs SBA and UPSTO to partner on training and materials for small businesses
    • Expected to be passed formally and be signed by President
  • Oversight hearing for USPTO held before House Judiciary Committee on May 22, 2018
  • House Small Business Committee held IP hearings in May and July

Financial Update – Tony Scardino

  • FY2018 Status
    • Trademark fee collections through 6/30 are up 9.7% over FY 2017, but slightly below (-0.7%) from projections
  • FY2019 Budget
    • Committee reports from House and Senate appropriate $47m less than President’s requested budget
  • FY2020 Budget
    • Due Sept. 10, 2018; released publicly in October
  • USPTO Fee Setting Authority
    • Sunsets Sept. 16, 2018
    • Hopeful that Congress will take action before then
  • Strategic Plan for 2018-2022 currently under development
    • Draft will be available for comment later this summer

TTAB update – Gerard Rogers, Chief Administrative Judge

  • Hiring new judges (currently 22, started Fiscal Year with 24 but two retired)
  • The volume of all filings (ex parte appeal, oppositions, cancellations) have increased this Fiscal Year, with Oppositions up 5% and Petitions to Cancel up 7.5%
  • However, the number of decisions requiring a decision on the merits is down about 9% this year
  • Total pendency in cases decided thus far this Fiscal Year is down
  • Streamlined cancellation proceedings for unused/abandoned marks
    • proposal postponed following the Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and Nonuse, comments received and discussions with stakeholder groups
    • Pilot project to identify appropriate cases, and to possibly streamline procedures in those cases
    • So far identified about ~20 cases
    • Some are proceeding with ACR mechanisms
    • May result in a notice of proposed rulemaking in the future after learning more from these pilot cases
  • TBMP revision was released
  • Revising standard protective order – still planning on reviewing possibilities in the coming months

OCIO Update – David Chiles, Acting Chief Information Office

  • Upgrades and testing for TMNG Exam tools for internal USPTO users ongoing
    • Behind schedule by 6 months
  • Began work to modify legacy systems to support mandatory electronic filing
  • Nothing reported affected improvements for outside users and filers, such as TEAS form enhancements, TTAB system upgrades, mobile application software, mobile formatting of webpages, improvements to T.E.S.S.

NEXT MEETING: October 26, 2018

TPAC Slides 2018-7-26 on Scribd

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