Earlier this month on May 7th, I attended the quarterly meeting of TPAC (Trademark Public Advisory Committee) hosted by the U.S. Patent and Trademark Office.

TPAC’s mission is to “advise the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of the patent and the trademark operations.” TPAC is intended to “represent the interests of the diverse users of the USPTO,” and it advises the director about “the policies, goals, performance, budget, and user fees of the patent and trademark operations.” For those interested in developments at the USPTO and the trademark registration process, the TPAC meetings are a peek into the hot issues and news regarding potential changes and tweaks to the system.

The most recent TPAC meeting was held May 7, 2010.  Here is a list of what appeared to me to be the most significant issues discussed:

  • Non-Attorney Trademark Services: TPAC members were concerned about the unauthorized practice of law (“UPL”) by document management services and others.  TPAC advised the Commissioner of Trademarks to review methods to prevent UPL and to increase warnings on TEAS applications and/or electronic application signatures.
  • Data Mining by Non-Attorneys: TPAC members were concerned about non-attorney services mining data, particularly email addresses, published from the USPTO to contact applicants and attorneys.  The Commissioner made it clear that the USPTO believes it should share as much data and information as possible with the public, but they will review whether Applicant email addresses can and should be hidden.
  • Trademarks Next Generation (TMNG): TMNG will be an overhaul of the trademark computer systems supporting the Trademark office, including web based publicly available systems.  TMNG is still likely several years away as the shape and scope of the project is still being defined.  It will definitely be something to watch unfold as it will affect applicants and attorneys.  The USPTO assured TPAC that current computer systems will not lag while the new system is designed and developed
  • Quality & Consistency: The Trademark Office will soon expand its program to promote consistency in the handling of applications from the same applicant.  Also, Trademark Examiners in each Law Office at the USPTO recently underwent training attempting to increase the quality of Office Actions and encouraging communication with applicant’s and attorneys by phone or by email when appropriate.
  • Litigation Abuse: The USPTO is planning to take a leading role in a Department of Commerce study of the effects on small businesses of potentially abusive trademark litigation practices. The study was commissioned by Congress in the recently enacted Trademark Technical and Conforming Amendment Act of 2010.
  • Trademarks in Descriptions of Goods/Services: To help keep registered trademarks out of the description of goods and services in applications and registrations, the Trademark Office is considering making available a service for trademark owners to add registered trademarks to a watch-list.
  • TMEP: The Trademark Manual of Examining Procedure will be updated this year, and there is a goal to have a “wiki” version of it available sometime in the future.
  • Bulk TM Data: Bulk data files from the trademark office will soon be hosted by Google to relieve bandwidth and server load on USPTO.  The USPTO currently offers bulk data for sale to users, but it will be free when provided by Google.  It is unclear what the effect of this data publishing will be.
  • Trademark Trial and Appeal Board Update from Judge Gerard F. Rodgers, Acting Chief Judge:
    • Case load is backed up, primarily because of significant time investment by judges and interlocutory staff toward updating the TBMP.
    • TBMP update should be done by the end of the year.
    • New filings are down compared to previous years.
    • The Board is promoting Accelerated Case Resolution options and would like to add a menu of several “plug-and-play” templates for different needs that may appeal to parties in different situations. TPAC will likely seek public comment in the fall from trademark organizations regarding this menu of templates.

As a whole, seeing the work of TPAC was fascinating.  The meetings are open to the public and webcast online.  However, if you plan on attending in person, allow additional time to clear security because the meetings are not held in rooms that are open to the general public. The Commissioner of Trademarks and the USPTO staff appear to genuinely value the advice and input of the Committee.  The Committee is in an excellent position to help communicate between the public – both applicants and attorneys – and the USPTO and to help make the USPTO’s programs and systems more effective for all.

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