Last week, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA. I attended in person so that I could summarize the key takeaways. There was quite a bit of newsworthy discussion, with several rulemakings about to go into effect.

Intro – Elizabeth Escobar (Vice-Chair)

  • Members in attendance:
    • Elizabeth Escobar
    • Stephanie Bald
    • Anne Gilson LaLonde
    • Chris Kelly
    • Brian Winterfeldt

Laura Peter: Deputy Under Secretary and Deputy Director

  • Recent Apollo 11 anniversary celebration focused on innovation and invention  with Secretary Ross, head of NASA, and others
  • Commissioner Denison testified to Congress last week, focus on specimens and fakes and counterfeits

Trademark Operations Update: Mary Boney Denison – Commissioner for Trademarks

  • Staffing
    • 951 employees in trademarks
    • 636 examining attorneys
    • 83% of examiners telework
    • FY2019 – hired 83 examining attorneys
    • FY2020 – plan to hire 40 examining attorneys
    • Set alert at usajobs.com for new postings
  • Filing Projection – 1.1% increase from FY 2018
    • Next year may be flat, projected
  • U.S. Counsel requirement
    • Goes into effect 8/3/2019
    • Exam guide forthcoming
    • Hoping it will help stem the tide of fake specimens and other issues, and help deal with unauthorized practice of law
    • US attorneys will have to confirm in good standing with a state bar, and will have to enter bar number
  • Mandatory electronic filing
    • Final rule will be published in the next few days
    • Will be effective 10/05/2019
    • Petition process for accepting paper submissions under limited circumstances
  • Section 2(a): Brunetti
    • New exam guide 2-19
    • No longer refusing marks as immoral or scandalous
  • Allowing multiple ‘insurance’ extensions when filing Allegation of Use
    • Drafting proposed rulemaking
  • Cannabis related marks
    • Three relevant laws
      • Controlled Substances Act (CSA)
      • 2018 Farm Bill
      • Federal Food Drug and Cosmetics Act (FDCA)
    • Exam Guide 1-19
    • Special group of examiners
  • August 12-14 training for USPTO Examining Attorneys
    • Everyone will be on site for one of three days
    • Office-wide training
    • Topics include x-search refresher, mandatory electronic filing, specimens
  • Addressing improper behavior
    • Action on lots of fronts
    • Numerous foreign practitioners have received exclusion orders
    • Developing a specimen database to help examining attorneys to see highly similar specimens already used
    • Login system requirement for all filings – Coming Soon
      • to be implemented around November 1, 2019
      • via my.uspto.gov
    • taskforce established to monitor and address these issues
    • Post-registration audit program
      • Will grow to audit of approx. 5,000 filings per year
    • Unauthorized changes to correspondence address – have addressed and login requirement will also help
  • MyUSPTO account will be required for all filings
    • Will use two step authentication each time logging in
    • Phase 2 – users of MyUSPTO accounts will have to “prove” who you are with a photo ID
  • Specimen Pilot Program
    • Expanded ability to submit now
    • See Exam Guide 3-19, includes reasons that can form basis of protest
  • Specimen rule revision
    • Part of the mandatory electronic filing rule
    • Must show URL for webpages
    • Tags/labels must be affixed to the goods; not merely shown by themselves
  • Misleading Solicitations
    • Still working with DOJ, hoping for criminal prosecutions soon
  • Customer Experience
    • Implemented surveys to get feedback
    • Working to improve website
  • TM5
    • Next meeting in December in Tokyo
  • Focus on China
    • Influx of filings
    • Concern about bad faith and specimens
    • Businesses get subsidies for filing in US; USPTO monitoring the issue
  • USPTO.gov
    • New widget TEAS Plus short form coming very soon
    • Simplified way for ITU TEAS+ filing
      • For both pro se and lawyers to use
    • USPTO TM Status App
      • Available from Apple App Store and Google Play
    • Free webinar/meeting – Post-registration Audit program
      • Monday, July 29 at 3pm
      • Can host up to 1,000 participants online

Policy and International Update – Amy Cotton

  • Successful in excluding IP from the recent Hague Judgments Convention negotiations
    • Still not quite finalized
  • Madrid Working Group
    • Proposals include adding Chinese, Russian, and Arabic as “working languages” in the system
      • Pro – increases use
      • Con – increased costs and complexity
    • USPTO supports a review of the language issues along with a review of the overall Madrid fees
      • Madrid fees have not had comprehensive review in 20 years
      • Madrid fees do not cover the costs (PCT generates 75% of WIPO fees)

TTAB Updates – Gerard Rogers, Chief Administrative Trademark Judge

  • TTAB Staffing
    • Mark Thurmon, new Deputy Chief Judge
    • 23 judges; 1 vacancy
    • 14 full time interlocutory attorneys; 2 part time
    • Increases planned
  • ALL TTAB filings have increased in FY2019
    • Trail cases increase is greater than ex parte appeals; Cancellation filings are up the most
    • Pendency on motions and decisions taking longer given rise in number and backlog
    • Overall case and appeal pendency is also up
    • Will be resuming program where some Examining Attorneys can do some time helping interlocutory attorneys
  • Standard Protective Order
    • Comments were requested and received by June 30, 2019
    • Main issues – access for in house counsel; number of ties of confidentiality
    • TTAB would still accept comments if anyone wants to submit
  • Expedited Cancellation Pilot
    • Identifying suitable cases
    • Discussing application of ACR procedures in those cases
    • Reviewing default rates in various types of cancellations

Legislative Updates – Branden Ritchie, Director, Office of Governmental Affairs and Oversight

  • Mr. Ritchie began as the Director in May 2019
  • Worked as chief counsel for House Judiciary, and for congressmen, and was a trademark examiner
  • Lots of hearings on the Hill in the last few months on IP issues
  • Interest in trademark issues
    • Trademark filings with inaccurate or fraudulent use claims
      • Possible draft bill in September
    • Anti-counterfeiting efforts by the U.S. government
    • Irreparable harm
      • Also possible draft bill coming
    • FLAG Act
      • Almost made it to the House floor, could still move forward
    • Franchisor/franchisee relationship
  • No sense of urgency regarding Brunetti decision and Section 2(a) reform

Fiscal Update – Sean Mildrew

  • Fee collections in FY2019 to date are up 2.9% over last year
    • slightly lower than projection (3.5%)
  • FY2020 budget – Congress has until October 1, 2019
  • FY2021 budget – will be submitted to OMB on September 9, 2019
    • Public release is Feb. 2020
  • Biennial fee review
    • Began in January 2019
    • Reviewing and analyzing possible fee proposals

OCIO Trademark IT update – Robert Harris & Jamie Holcombe

  • Recent activity
    • System updates to support US Counsel rule effective August 3rd
    • System update to support mandatory electronic filing in progress
    • Testing TEAS Plus short form
    • TM Status App made available May 8th
  • TSDR Bulk data customers have a short-term solution to get access to the data they need
  • AI solutions for image and specimen search capabilities being researched
  • Beta testing for examiners continuing
    • TMNG exam product beta tested Nov. 18 to Jan. 19
      • But still beta testing
    • Still deploying fixes and more testing ongoing

The presentation slides are available on the USPTO website here.


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