[Summary provided by Mark Donahey of Erik M. Pelton & Associates]

The following is a summary of the key points discussed at the June 3, 2011 public meeting of the Trademark Public Advisory Committee (TPAC) at the USPTO.

Teresa Ray, new Deputy Director of the USPTO, spoke about several issues. She noted that the USPTO is attempting to get power for multi-year budget planning authority which would give it more options when faced with budget or cost issues. She also presented outgoing Chairman of TPAC, John Farmer a certificate thanking him for his service to TPAC.

Outgoing TPAC Chairman John Farmer

Then Chairman Farmer spoke and thanked many individuals for their assistance during his time with TPAC.

It was announced that Maury Tepper, Attorney at Tepper & Eyster, PLLC serving a third term on TPAC, will become the new Chairman.

Dana Colarulli (Director, Office of Governmental Affairs), briefed the Committee on pending legislation which would affect the USPTO: the Patent reform bill (H.R. 1249), the Protect IP Act (S. 968), and a bill introduced (S. 978) which would criminalize illegal streaming of audio or video. He summarized briefly the USPTO report to the Senate Judiciary Committee in the Trademark Litigation Tactics study. He also noted, regarding budget issues, that the USPTO has requested a FY2012 budget of $2.599 million. Its 2011 budget is $2.090 million. The USPTO’s Fiscal Year 2012 budget is kept at the 2011 level, significant cuts by the USPTO will be needed to avoid a deficit.

Commissioner of Trademark Deborah Cohn spoke regarding a few items:

  • Trademark Disclaimer Practice Roundtable – will be held at USPTO June 21st and webcast. More details here. The USPTO does not have any particular changes in mind, but believes it would be a good time to evaluate disclaimer practices.
  • Performance Metrics are exceeding USPTO’s targets in general
    • new “Excellent Office Action” metric measured 21.1%, which exceeded the target measure of 15%
  • The Trademarks Dashboard was recently launched on the USPTO website.
  • Examining Attorneys are now required to include their email address in Office Actions.
  • The USPTO is moving towards allowing TEAS applicants to include multiple email addresses (i.e. one for attorney, one for firm docketing).
  • USPTO is preparing for a pilot study and notice of proposed rule making to allow Examining Attorney’s to request additional information about goods and services to ensure they are in use.

Cynthia Lynch (Administrator for Trademark Policy and Procedure at the USPTO) spoke regarding continuing efforts to respond to concerns about non-attorney filers of trademark applications for others and the unauthorized practice of law. She noted, following a question from Farmer, that it is the position of the Office of Enrollment and Discipline that the preparation of an application for a trademark applicant to sign by someone who is not an attorney constitutes unauthorized practice of law.

Chief Judge Gerard Rogers of the Trademark Trial and Appeal Board spoke on several issues:

  • The new TBMP has been posted in PDF format; it will eventually be available in HTML and allow for comments from users as with the TMEP.
  • There is now a link on the TTAB homepage for “TTAB New Filings and Performance Measures“. These statistics show that for the most part, the length of cases and the time taken for the Board to issue decisions is generally (though not across the board) on the rise.
  • There are two vacancies on the Board; they will hopefully be filled soon.
  • The TTAB website also now includes a separate section on ACR, and it now includes some information about sample “plug and play” options (thus far, the only suggestions are from the AIPLA).
  • Comments regarding the Board’s Request for Comments regarding TTAB participation in settlement discussions are due by June 21.
  • The Board anticipates that future TBMP updates will be much more frequent and may even dedicate a full time employee to work on editing it. In the interim, the Board is maintaining a list of issues that already need updating since the current TBMP update was issued.
  • TPAC has requested that the TTAB issue a Notice if Inquiry regarding an option to fast-track TTAB proceedings for parties that cannot wait 176 weeks for a decision. The TTAB may look into this in the future but right now is working on the current settlement participation inquiry and promoting use of ACR options.

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