The Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA yesterday on Thursday, October 16, 2014.  The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting:

Chair –Maury Tepper

  • It is a very busy week at USPTO as the Trademark Expo takes place Friday and Saturday
  • It is the final meeting for three members whose terms end in December this year. Each of the three was presented with a plaque
    • Ray Thomas, Jr.
    • Jody Drake
    • Linda McLeod
  • This is also the final meeting for Commissioner Debbie Cohn, who is retiring at the end of the year after more than 30 years of serving the USPTO. She was given a book of notes from TPAC members and a standing ovation.

Legislative Update – Dana Robert Colarulli (Director, Office of Governmental Affairs)

  • Chair of the House Subcommittee of Subcommittee on Courts, Intellectual Property, and the Internet – Howard Coble – is retiring. So there will be a new leader of the subcommittee next Congress
  • If Republicans win the Senate, Chuck Grassley (R-IA) would take leadership of the Committee on the Judiciary
  • Congress has been quite inactive, at least in enacted legislation, in this 113th Session compared to recent Sessions
  • HR 5108 – Law School Clinic Certification Program – for expansion and establishment as a permanent program, rather than a pilot. The bill has passed the House, and will likely be acted on soon by Senate.
  • Congressional Trademark Caucus – officially launched Sept. 2014.
    • INTA very involved
    • First Event –Trademark Expo Amplification on October 9, 2014
    • Moran entered a statement in the Congressional Record regarding the Trademark Expo
  • Several hearings earlier this year on copyright issues.
  • Continuing to monitor activity on patent related issues.
  • President last week mentioned patent issues in a speech.
  • Some discussion regarding legislation on trade secrets, and still possible that something gets done on the topic this year.
  • Silicon Valley office of USPTO will open in Spring 2015, Dallas office at end of 2015

Shira Perlmutter (Director for International Affairs) & Dominic Keating (Director, IP Attaché Program)

  • IP Attachés are diplomats based abroad who are IP experts. They have four main activities:
    • Advocate with the host governments on IP issues
    • Train (judges, prosecutors, customs, policy officials, etc) host government officials on IP matters
    • Build support for US IP positions with public outreach
    • Assist US stakeholders to appropriate resources
  • The Attachés have access to resources and staff at USPTO
  • 11 Attachés currently, based in 8 countries
    • 2 in Geneva (covering TRIPS/WTO and WIPO/UN issues)
    • 3 in China
    • Brazil
    • India
    • Russia
    • Bangkok
    • Mexico City
    • Kuwait City
    • Soon, someone will be going to Brussels to cover E.U.
    • Future office in Lima (covering the Andean region) likely; South Africa possible in the future
  • Funded by USPTO fee revenue (55% trademarks, 45% patents)
    • Recently examined the current division of work done in FY2013, about 42% of the work was attributed to trademark issues
  • Director Perlmutter noted that they are looking for ways to make sure the program reaches smaller businesses, not only those involved in INTA and US Chamber of Commerce
  • During the week of December 15th, 2014 there will be meetings in DC and USPTO with the Attachés and USPTO, other government officials, and stakeholders

Trademark Operations – Commissioner Cohn

  • 7% applications are processed completed electronically from start to finish.
  • FY2014 filings: 455,017 application classes filed. Remarkably close to the expected target of 455,000 and up 4.9% over FY2013 (433,654)
  • USPTO is forecasting another increase of about 5% for FY2015.
  • Percentage of Exceptional office actions for FY2013 exceeded the goal.
  • See slides for more details regarding pendency and other measurements.
  • TEAS and TEAS+ filing discounts of $50 will go into effect soon. Final rule will be published in November, which will set the implementation date which is currently expected to be in January 2015.
  • 10 year Renewal fee will go from $400 per Class to $300 per Class when filed electronically.
  • TMEP update will be published at end of October incorporating recent examination guides and some other developments.
  • Trademark Next Generation (TMNG):
    • Large portion of effort going into FAST, the tools used by Examining Attorneys.
    • New Identification of Good and Service Manual will be deployed in beta form soon.
    • Reminder notices for renewals and Section 8 periods will go into effect in January 2015. Reminders will be sent on the first day of the eligible filing period to those who have authorized email communication from the USPTO
  • Section 8 Specimen review pilot project. More than 50% were not able to show use on all the goods or services.
    • Roundtable will be on December 12, 2014. It will be webcast. Public can speak and comment during the roundtable.
  • Amendments to ID based on changes in technology. Proposal has been posted on website. Allowances for changes are relatively limited and conservative. Comments open until November 3, 2014.
  • Outreach initiatives:
    • The USPTO (Craig Morris) has reached out to more than 40 organizations in the last year to discuss the importance of trademarks.
    • Stakeholder outreach: continuing to work with INTA, ABA and others.
    • Trademark Expo: Friday and Saturday this week. Lots of exhibitors and lectures and seminars. Opening ceremonies Friday at 10am.
    • International outreach: TM5 forum. Working on harmonized ID list available in one source to seek ID available in all the jurisdictions. tmfive.og for more information

USPTO Budge Update (Tony Scardino – Chief Financial Officer)

  • A year ago, we were in the midst of partial government shutdown.
  • FY2014 trademark fees collected were $275.7 million, 1.0% below estimate.
    • 6% above FY2013
    • 7% above appropriation level
  • Fee collection category breakdown provided in the slides.
  • Section 9 fees projected to decline 28% in FY2015.

Trademark Trial and Appeal Board – Chief Administrative Trademark Judge Gerard Rogers

  • Pendency down for both Ex Parte and Inter Partes cases.
  • Filings of new appeals and inter partes cases were up in FY2014.
  • New Deputy Chief Judge, Susan Richey.
  • Revisions to TBMP are expected to be published online soon, and will be more searchable (similar to the USPTO’s TMEP).
  • Outreach:
    • ABA program at USPTO last month featured live hearing.
    • Also held hearings this year at Fordham, Boston Patent Law Association, and more.
  • In FY2014:
    • 406 appeals decided
    • 131 trial cases decided
      • 21 of the trial cases decided involved some form of ACR
    • 45 precedential decisions issued in FY2014
    • More details and statistics regarding the pendency and case inventory contained in the slides
  • Note: The report was did not feature data on the overall duration of the average appeal or inter partes case, a number that has been reported in the past.

OCIO/Trademarks Next Generation update – John Owens (CIO) and Raj Olas (TMNG)

  • Focus of projects is shifting from internal examiner capabilities to capabilities for external users.
  • New ID Manual (beta) demo
    • Will feature new search options, display options, and functionality.
    • Beta will be live at the end of October.
  • See slides for more details on recent and upcoming projects.

NEXT MEETING: Friday, February 27, 2015


USPTO Trademark Public Advisory Committee handout October 10, 2016

TM Expo photo

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