This morning, the Trademark Public Advisory Committee (TPAC) met at USPTO headquarters in Alexandria, VA. I was unable to attend the meeting in person, but streamed the entire meeting on video. The following are the highlights of the presentations and discussions.
Current TPAC Membership roster:
- William G. Barber – chair
- Elizabeth Escobar – Vice Chair
- Brian Winterfeldt
- Ileen Tannen
- Donna Tobin
- Anne Gilson LaLonde
- Stephanie Bald (new member)
- Chris Kelly (new member)
- Kelly Walton (new member)
Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO), Laura A. Peter
- Since partial government shutdown, the USPTO has been functioning as normal using reserve fees collected prior to 12/22/2018
- In absence of appropriations, USPTO cannot access any of the fees collected since 12/22/2018
- Current estimate is that reserves will fund patent operations until at least the 2nd week of February 2019
- Current estimate is that reserves will fund trademark operations until at least mid-April 2019
- USPTO is evaluating ways to conserve funds in the interim to possibly extend these dates
- In event of a shutdown of operations, small staff would continue to work to receive both electronic and paper applications, and PTAB and TTAB filings, and payments, and to maintain IT infrastructure
- USPTO’s overall IT status: still reviewing applications to for the CIO position; maintaining current systems and scheduled updates; in midst of a complete review of current and planned projects and recommendations for going forward, including evaluation of success of TMNG and consider whether to continue plans or update them; hope to have decisions shortly
- Mandatory electronic filing rule: to save time and money, aim to make process fully electronic end-to-end; publication and implementation of new rule planned for later FY19; will make electronic filing mandatory and mandate that all communications be electronic
- Foreign filings rule: awaiting OMB clearance, delayed by shutdown; would require foreign applicants to be represented by a licenses US attorney
- Looking to hire over 100 more trademark examining attorneys this year
Trademark Operations Update – Commissioner Mary Boney Dennison
- 61 new ex attorneys last fiscal year; hiring approximately 110 this fiscal year
- 77% telework full time
- Predicting 6.1% growth for FY19 over FY18, however:
- Filings in Q4 FY18 were down 0.2%
- Filings in Q1 FY19 down 1.1%
- December first action pendency 3.4 months; more employees are now examining (managers, etc)
- Will push for the final rule on mandatory electronic filing as soon as OMB is reopened
- there are a few exceptions (international agreements; filings for smell, flavor, etc)
- USPTO.gov – new widget; TEAS Plus Short Form
- U.S. Counsel Requirement for foreign applicants: waiting on OMB
- Brunetti Case – argument expected at Supreme Court in April 2019
- Proof-of-use audit: 48% of registration with a response filed deleted some goods or services; 70% of respondents are represented by an attorney
- Unauthorized changes to correspondence records
- Created a webpage with more details https://www.uspto.gov/trademark/trademark-updates-and-announcements/unauthorized-changes-your-file
- Catching a vast majority of them internally by IT
- Also sending email alerts
- Misleading solicitations – in 2019, extending the attorney detail with DOJ to continue work on criminal prosecutions
- Improving customer experience
- Implemented two touchpoint surveys
- Two more coming
- Planning on “dramatically improving our website”
- Improved TESS guidance pages, and other new/improved pages as well
- China – dramatic increase in last 3 years in US applications from China
- 1% of all classes filed in FY2018 were from China
- FY18 overall growth: 15% of it was from China
- 1400 certificates last week without goods/services in them
- fixing problem that led to it
- replacing certificates, starting to mail them out
Office of Policy and International Affairs update– Amy Cotton
- Summarized OPIA’s trademark goal and priorities for FY2019
Legislative Update – Dana Colarulli, Director, Office of Governmental Affairs
- New members on Senate Judiciary Committee
- Awaiting final membership list for House Judicial Committee
- Targeted measures addressing trademark and copyright legislation are being discussed
- PTO legislative priorities
- Continuity of operations
- Elevating IP attache rank
- Coordination of copyright policy functions
- Trademark issues taken up could include
- Create a presumption of irreparable harm (re: injunctive relief) in trademark infringement cases)
- Consolidation of TTAB appeal at Federal Circuit
- Bill on state seals and insignia
- USPTO technical amendments
Financial Update – Tony Scardino
- FY2019 status
- Appropriation for USPTO lapsed 12/22/2018 at 12:01am
- USPTO continues to collect fees
- Has operating reserve that it can spend
- But cannot spend the fees collected since 12/22/2018
- FY2019 2.1% increase at end of Q1FY2019
- FY2020 budget
- Typically, president’s budget is release in February
- May be delayed due to partial government shutdown
- 2018-2022 USPTO Strategic Plan was published November 29, 2018
- In midst of required biennial fee review
TTAB update – Gerard Rogers, Chief Administrative Judge
- 22 Administration trademark judges currently
- Planning to get back to 24, waiting on Commerce Department to sign off on some recommended hires
- In Q1 FY2020, Ex Parte notices of appeal rose 7.5%
- Two recent retirees has led to a decrease in number of contested motions and cases decided on the merits in Q1 FY2019
- Simplified consent motion form will block people out if the period expired over a weekend/holiday and then try to file on next business day; can still file as a general filing and attached a schedule
- IT updates coming in April
- Will fix problem identified above
- Will allow “save session” for notice of opposition when opposing multiple applications
- Standard Protective Order
- Seeking comments on ideascale by March 31st
- Expedited Cancellation Pilot Program
- Request for comments on “streamlined” process published in May 2017
- Pilot is identifying possible cases with only nonuse or abandonment issues
- 75 identified
- 12 cases joined pilot
IT Update – David Chiles, Acting CIO; Robert Harris, Acting TMNG portfolio Manager
- I wish I could understand most of what was said. I did not. Instead, I captured all the slides. See below.
- Still beta testing updates for examiners
- Phase 2 of beta testing delayed
NEXT MEETING Scheduled for Friday April 26, 2019
