TPAC Meeting Summary – July 26, 2019

Last week, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA. I attended in person so that I could summarize the key takeaways. There was quite a bit of newsworthy discussion, with several rulemakings about to go into effect.

Intro – Elizabeth Escobar (Vice-Chair)

• Members in attendance:
  • Elizabeth Escobar
  • Stephanie Bald
  • Anne Gilson LaLonde
  • Chris Kelly
  • Brian Winterfeldt

Laura Peter: Deputy Under Secretary and Deputy Director

• Recent Apollo 11 anniversary celebration focused on innovation and invention  with Secretary Ross, head of NASA, and others
• Commissioner Denison testified to Congress last week, focus on specimens and fakes and counterfeits

Trademark Operations Update: Mary Boney Denison – Commissioner for Trademarks

• Staffing
  • 951 employees in trademarks
  • 636 examining attorneys
  • 83% of examiners telework
  • FY2019 – hired 83 examining attorneys
  • FY2020 – plan to hire 40 examining attorneys
  • Set alert at usajobs.com for new postings
• Filing Projection – 1.1% increase from FY 2018
  • Next year may be flat, projected
• U.S. Counsel requirement
  • Goes into effect 8/3/2019
  • Exam guide forthcoming
  • Hoping it will help stem the tide of fake specimens and other issues, and help deal with unauthorized practice of law
  • US attorneys will have to confirm in good standing with a state bar, and will have to enter bar number
• Mandatory electronic filing
  • Final rule will be published in the next few days
  • Will be effective 10/05/2019
  • Petition process for accepting paper submissions under limited circumstances
• Section 2(a): Brunetti
  • New exam guide 2-19
  • No longer refusing marks as immoral or scandalous
• Allowing multiple ‘insurance’ extensions when filing Allegation of Use
  • Drafting proposed rulemaking
• Cannabis related marks
  • Three relevant laws
    • Controlled Substances Act (CSA)
    • 2018 Farm Bill
    • Federal Food Drug and Cosmetics Act (FDCA)
  • Exam Guide 1-19
  • Special group of examiners
• August 12-14 training for USPTO Examining Attorneys
  • Everyone will be on site for one of three days
  • Office-wide training
  • Topics include x-search refresher, mandatory electronic filing, specimens
• Addressing improper behavior
  • Action on lots of fronts
  • Numerous foreign practitioners have received exclusion orders
  • Developing a specimen database to help examining attorneys to see highly similar specimens already used
  • Login system requirement for all filings – Coming Soon
    • to be implemented around November 1, 2019
    • via my.uspto.gov
  • taskforce established to monitor and address these issues
  • Post-registration audit program
    • Will grow to audit of approx. 5,000 filings per year
  • Unauthorized changes to correspondence address – have addressed and login requirement will also help
• MyUSPTO account will be required for all filings
  • Will use two step authentication each time logging in
  • Phase 2 – users of MyUSPTO accounts will have to “prove” who you are with a photo ID
• Specimen Pilot Program
  • Expanded ability to submit now
  • See Exam Guide 3-19, includes reasons that can form basis of protest
• Specimen rule revision
  • Part of the mandatory electronic filing rule
  • Must show URL for webpages
  • Tags/labels must be affixed to the goods; not merely shown by themselves
• Misleading Solicitations
  • Still working with DOJ, hoping for criminal prosecutions soon
• Customer Experience
  • Implemented surveys to get feedback
  • Working to improve website
• TM5
  • Next meeting in December in Tokyo
• Focus on China
  • Influx of filings
  • Concern about bad faith and specimens
  • Businesses get subsidies for filing in US; USPTO monitoring the issue
• USPTO.gov
  • New widget TEAS Plus short form coming very soon
  • Simplified way for ITU TEAS+ filing
    • For both pro se and lawyers to use
  • USPTO TM Status App
    • Available from Apple App Store and Google Play
  • Free webinar/meeting – Post-registration Audit program
    • Monday, July 29 at 3pm
    • Can host up to 1,000 participants online

Policy and International Update – Amy Cotton

• Successful in excluding IP from the recent Hague Judgments Convention negotiations
  • Still not quite finalized
• Madrid Working Group
  • Proposals include adding Chinese, Russian, and Arabic as “working languages” in the system
    • Pro – increases use
    • Con – increased costs and complexity
  • USPTO supports a review of the language issues along with a review of the overall Madrid fees
    • Madrid fees have not had comprehensive review in 20 years
    • Madrid fees do not cover the costs (PCT generates 75% of WIPO fees)

TTAB Updates – Gerard Rogers, Chief Administrative Trademark Judge

• TTAB Staffing
  • Mark Thurmon, new Deputy Chief Judge
  • 23 judges; 1 vacancy
  • 14 full time interlocutory attorneys; 2 part time
  • Increases planned
• ALL TTAB filings have increased in FY2019
  • Trail cases increase is greater than ex parte appeals; Cancellation filings are up the most
  • Pendency on motions and decisions taking longer given rise in number and backlog
  • Overall case and appeal pendency is also up
  • Will be resuming program where some Examining Attorneys can do some time helping interlocutory attorneys
• Standard Protective Order
  • Comments were requested and received by June 30, 2019
  • Main issues – access for in house counsel; number of ties of confidentiality
  • TTAB would still accept comments if anyone wants to submit
• Expedited Cancellation Pilot
  • Identifying suitable cases
  • Discussing application of ACR procedures in those cases
  • Reviewing default rates in various types of cancellations

Legislative Updates – Branden Ritchie, Director, Office of Governmental Affairs and Oversight

• Mr. Ritchie began as the Director in May 2019
• Worked as chief counsel for House Judiciary, and for congressmen, and was a trademark examiner
• Lots of hearings on the Hill in the last few months on IP issues
• Interest in trademark issues
  • Trademark filings with inaccurate or fraudulent use claims
    • Possible draft bill in September
  • Anti-counterfeiting efforts by the U.S. government
  • Irreparable harm
    • Also possible draft bill coming
  • FLAG Act
    • Almost made it to the House floor, could still move forward
  • Franchisor/franchisee relationship
• No sense of urgency regarding Brunetti decision and Section 2(a) reform

Fiscal Update – Sean Mildrew

• Fee collections in FY2019 to date are up 2.9% over last year
  • slightly lower than projection (3.5%)
• FY2020 budget – Congress has until October 1, 2019
• FY2021 budget – will be submitted to OMB on September 9, 2019
  • Public release is Feb. 2020
• Biennial fee review
  • Began in January 2019
  • Reviewing and analyzing possible fee proposals

OCIO Trademark IT update – Robert Harris & Jamie Holcombe

• Recent activity
  • System updates to support US Counsel rule effective August 3rd
  • System update to support mandatory electronic filing in progress
  • Testing TEAS Plus short form
  • TM Status App made available May 8^th
• TSDR Bulk data customers have a short-term solution to get access to the data they need
• AI solutions for image and specimen search capabilities being researched
• Beta testing for examiners continuing
  • TMNG exam product beta tested Nov. 18 to Jan. 19
    • But still beta testing
  • Still deploying fixes and more testing ongoing

The presentation slides are available on the USPTO website here.