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
- uspto.gov
- 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 my.uspto.gov 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
- Implementing four customer touchpoint surveys
- Working on enhancing TESS guidance for users
- Two new webpages published recently
- Updated several pages including “why hire a private trademark attorney”
- 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 TMSpecimenProtest@uspto.gov
- TM5
- TM5 annual meeting ins Seoul, South Korea, November 1-2, 2018
- TM5 ID list search tool posted on the TM5 website (tm5.org)
- 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
