TPAC Quarterly Meeting Summary – September 2010

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On September 2nd, the Trademark Public Advisory Committee (“TPAC”) held its quarterly meeting at the U.S. Patent and Trademark Office. Comprised of nine committee members, TPAC functions as an advisory body to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on management and operations issues. Quarter meetings focus on creating a dialogue to further improve the quality and effectiveness of the trademark application system.

Here are the most significant issues (in my opinion) discussed at the recent TPAC meeting, which I attended in person:

• De Minimis Role: TPAC’s Chair, John B. Farmer, underscored a pre-existing rule limiting TPAC members to commit not more than 60 days a year of TPAC work.  The rule also restricts volunteer work beyond those 60 days. To ensure TPAC’s compliance, TPAC has devised “TPAC Thursdays” in which members will use the first three (3) Thursdays to do TPAC work, in addition to those days used to hold TPAC meetings and phone conferences.
• Non-Attorney Trademark Services: TPAC members voiced continued concerns about the possible unauthorized practice of law (“UPL”) by document management services and others. In the last quarterly meeting (my blog summary here), TPAC advised the Commissioner of Trademarks to review methods to prevent UPL and to increase warnings on TEAS applications and/or electronic application signatures. The Commissioner once again highlighted that the USPTO has limited tools to enforce the illegal practice of law warnings on the website and referring known violators to appropriate bar agencies.
• Encouraging Electronic Filing: In an effort to increase efficiency as well as database maintenance and accuracy, TPAC continues to encourage electronic filing. A rule establishing higher fees for trademark filings made on paper has been proposed and will be published for opposition and comments in the near future. There are no plans at this time to decrease or change current electronic filing fees.
• Increasing Telework Among Examining Attorneys: The Senate and House have passed bills regarding increasing the number of examining attorneys that may telecommute, or work from home via Internet and by phone. Proposed legislation states that examining attorneys located more than fifty (50) miles away from the USPTO Office will continue to report physically, although the USPTO would like to eliminate or reduce the requirements.
• Trademarks Next Generation (TMNG): The USPTO is beginning the process to plan and design replacements for the computer systems supporting the Trademark Office, including web based publicly available systems. Although TMNG continues to be in the early development stages, the Chief Information Officer (“CIO”) stated he was looking to work toward launching TMNG in 2013. Notable developments discussed by the CIO are:
  • TESS search systems have been under malicious attack repeatedly, likely by ‘bots’ which are either scraping all data or just frustrating USPTO computer power. (Example: one I.P. address recently was used to open 70,000 TESS requests in a span of several hours.)
  • USPTO has increased the connection ‘pool’ to the TESS search features to help reduce the connectivity problems for users.
  • USPTO is likely to implement a reCAPTCHA^TM mechanism in the near future for TESS users to block ‘bot’ access. The mechanism, which requires transcription of letters in an image and blocks use of the site by ‘bots’ and is already be used by the USPTO for the Patent Applicant Information Retrieval system here: http://portal.uspto.gov/external/portal/pair
  • A tenfold increase in the USPTO campus’ overall internet bandwidth scheduled for next year should help improve speed for both inbound and outbound data flow.
  • TMNG will no longer be one large overhaul completed and implemented at once, but rather a series of many smaller enhancements and changes rolled out over time.
  • In FY2011, the USPTO intends to unveil T.D.R. 2.0 which will host trademark application file documents in the ‘cloud’ and allow for quicker access in a variety of formats. Hosting in the cloud will not compromise the accuracy of the original data and documents.
• Quality & Consistency: The Trademark Office is taking steps to create and launch a program to promote consistency in the handling of applications. 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. The Trademark Office is considering allowing state bar associations to review and comment on sample office actions.  Ultimately, the Trademark Office intends to establish more formal standards and benchmarks for internal quality and consistency assurance.
• TTAB updates from Acting Chief Administrative Chief Judge Gerard F. Rogers:
  • Updates to the TTAB Manual of Procedure (“TBMP”) are continuing. Three more chapters will be sent to the Solicitor’s Office next week leaving only two more chapters remaining to be revised. Internal revisions will likely be completed by the end of the fiscal year, and the revised TBMP will hopefully be publicly available in early 2011. The TTAB hopes to make it available in a variety of formats.
  • TTAB case filings are down (Third Quarter FY10 compared to Third Quarter FY09: Ex Parte Appeals down 20%, new Oppositions down 16%, new Cancellations down 15%).
  • TTAB case pendency continues to grow while the TBMP revisions consume significant judge and staff time.  Average length of trial cases going all the way to final decision which were decided in Q3 FY10 was 260 weeks, with a median figure of 183 weeks.
  • Approximately 97% of trial cases do not reach a final decision by a panel of judges because they are withdrawn, involve default or failure to prosecute, or settlement.
  • Judge Participation in Settlements: The TTAB may soon implement a pilot program regarding judge participation in settlement discussions. The pilot would involve those TTAB cases which have been suspended for settlement discussions for the longest periods of time. Details of program remain to be further formulated, but judge participation in such discussions was recently approved in the latest version of the USPTO strategic plan.
  • More details from Judge Rogers’ report here: http://www.uspto.gov/about/advisory/tpac/2010sep02-ttab_statistics-tpac.pdf

For more information from the September 2nd meeting including a detailed agenda and presentations, see http://www.uspto.gov/about/advisory/tpac/2010sep02.jsp.