Yesterday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA. While I was unable to attend in person, I watched the streaming video live. Here is a rundown of key things covered in the meeting discussion:
Opening Remarks – Joseph Matal, Performing the non-exclusive duties and functions of the USPTO Director)
- CIO resigned recently
- USPTO is taking a hard look at IT issues
Policy and International Update – Shira Perlmutter, Chief Policy Officer and Director for International Affairs
- Hague convention negotiations on whether to join; draft would require recognition of foreign judgments
- One issue USPTO looking at is whether IP judgments be included?
- INTA supports including registered and unregistered TMs in the scope
- Other stakeholders (AIPLA) have opposed including IP
- Particular concerns regarding geographic indicators and how they are treated by EU, and global injunctions
- Would need to be ratified by US Congress to have effect
Legislative Update – Dana Colarulli, Director, Office of Governmental Affairs
- Awaiting hearing / confirmation process to move forward to nominee of new USPTO Director – Andrei Ianco who was nominated on 8/25/2017
- Relaunch of Congressional Trademark Caucus
- Telework Enhancement Act Pilot Program – seeking extension for 3 years for telework program. Current authority set to expire in December 2017
- USPTO fee setting authority set to expire next year (per AIA)
- USPTO is hopeful there will be legislation to extend or make permanent.
Trademark Operations Update – Commissioner Mary Boney Dennison
- 3 TPAC terms are coming to a close. The Commissioner thanked for service and presented certificates to Jonathan Hudis, Jody Drake, and Timothy Lockhart
- Almost 550 examining attorneys now
- Planning to hire 60-65 this fiscal year; interviews begin next week
- 12% increase in filings FY2017 over 2016 (had anticipated approximately 7% growth)
- Paper applications continuing to dwindle
- Overall electronic filing for all applications is still a goal
- No cash accepted by trademarks as of 11/1/2017
- USPTO.gov – USPTO still promoting this tool. Approx. 2,500 users
- Working on a simplified EZ filing for standard character ITU filing
- Not working on an app
- TMEP recently updated
- Mandatory e-filing – proposed rulemaking coming in the next few months
- Regulatory reform working group has been formed. Proposal to remove interference proceedings at the TTTAB published on 10/18/2017. Comments due by 11/17/2017.
- Four exam guides published in the last year
- Random audit program for renewals – Subject registrations are single class registration with 4+ goods, and multiple class registrations with 2+ goods in classes
- A lack of a response filed will result in cancellation of the registration in entirety
- Fraudulent solicitations
- increased “warnings” by web, video, cover emails, filing receipts, and more
- several DOJ criminal proceedings in the last year; USPTO is working to lend DOJ attorneys to help
- Hired Chief Customer Experience Administrator. Work to improve plain language and customer experience.
- TM5 meeting coming up in Spain 11/30 and 12/1; KIPO will host next year
- Specimen issues
- USPTO is doing its best to refuse fraudulent specimens
Financial Update – Mark Krieger, Acting Deputy CFO
- FY2017 – USPTO collected $305M in trademark fees
- FY2018 – under a continuing resolution
TTAB update – Gerard Rogers, Chief Administrative Judge
- Filings increased in FY2017
- Petitions to Cancel have increased the more than other filings in the last few years
- Total pendency increased in Trial Cases by 3 weeks
- Several Board decisions have dealt with the rules changes implemented
- New streamlined cancellation proceedings
- TTAB may established new proceeding for handling abandonment and nonuse claims
- Public meeting held
- Request for comments published May 16, 2017; comments received (still welcome, via TTABFRNotices@uspto.gov)
- Currently accepting comments on Standard Protective Order that went into effect 6/24/2016
OCIO Update
- Erik’s summary: Lots of plans in the works, but many projects behind originally scheduled time frames
- Erik’s opinion: After more than five years (see Director’s blog from 2010 here), Trademarks Next Generation needs to be scrapped and re-launched with a new mission and new personnel. Millions of dollars have been spent, and while there have been numerous enhancements, as whole they have been unimpressive. By the time the projects of “TMNG” are completed, they will be from the last generation.
- No mention was made of improvements to T.E.S.S. or mobile formatting of USPTO web trademark systems.
