Last Friday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA. The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting, as reported by Associate John C. Heinbockel:
- The Office is in good fiscal shape: Paid fee classes have increased 7.5% over the previous fiscal year, and the Office currently has about 4 months of operating reserve saved in the event of a budgetary/funding crisis.
- The Office is working hard to eliminate paper filings: Currently 99.7% of all applications are submitted electronically, but fewer are completed entirely electronic throughout the application process. Commissioner Dennison is now personally calling some applicants that submit on paper to find out why.
- The Office is adjusting to a new political climate: The Office was able to get in all its hiring for the fiscal year before the hiring freeze (now lifted) was put in place. The Office will look very carefully at its hiring needs in the future. The Office has also established a “regulatory reform” working group and is considering expanding its operating reserve beyond the current four months.
- Plain language and clarity: The Office is serious about improving the clarity of its trademark information systems for pro se applicants. The Office has simplified the language in the filing declarations. For example, the USPTO recently reworded the TEAS filing form button labeled “Save Portable Data” to “Save Form.” The Office also recently rolled out a “Maintenance” tab on TSDR to clearly display deadline dates for filing renewal documents.
- Trademarks Next Generation is a mess: The Office has been talking about its upgraded computer and information systems, Trademarks Next Generation, for years, and progress has been very slow going. The Office is now in Phase 2, which involves rolling out Examining Capabilities that were deferred from Phase 1. But there appear to be many problems, including a text editor so dysfunctional that the Office is considering scrapping it (after years of development) and going to an “off-the-shelf product such as Microsoft Word.” The Office has still not identified all its user requirements and is also having problems with data corruption.
- The Office knows it: There is a new portfolio manager in charge of TMNG, and the Office has brought in consultants from Ernst & Young to independently review the TMNG program.
- It’s not all bad news: The Office has put a lot of effort into the myUSPTO platform, which continues to deploy new enhancements. myUSPTO now allows users to track applications and registrations on the same docket and will soon be able to handle up to 1000 applications/registrations. myUSPTO will also roll-out a simple Gazette monitoring service later this summer. There is also a trademark notification app available via GitHub that pushes notifications about status changes on tracked applications.
- Fraudulent solicitations in the cross-hairs: In the wake of several convictions related to fraudulent trademark solicitations, the Office is continuing efforts to protect consumers. There will be a round table held on July 26, 2017, to which the Office has invited representatives from the FTC, Customs & Border Patrol, US Postal Inspectors, the SBA, and the DOJ. The Office has also reached out to its international partners in the TM5. Warnings about fraudulent solicitations are now more prominent in USPTO filing receipts, and the Office includes similar warnings to applications and registrants at almost every step of the registration process.
- TM5 Bad Faith Filings: The Office is also working with its partners in the TM5 to minimize bad faith filings. There is TM5 meeting open the public on this topic on May 21, 2017, at INTA in Barcelona.
- Too early to judge impact of new TTAB rules: After new rules went into effect in January, it’s too early to measure what impact the rules will have pendency statistics. Since the rules were put in place, Extensions of Time to Oppose are down, but Judge Rogers thinks this is a normal fluctuation, rather than a consequence of the new fee. There are a number of ESTTA changes upcoming that should bring efficiencies, however, including increased automated institution of cases and additional form questions that will limit filing of untimely motions.
- New Nonuse and Abandonment Proceedings are in development: The Board has drafted a Request for Comments that is being cleared concerning a new streamlined cancellation proceeding for handling abandonment and nonuse claims. These proceedings would be expedited reviews of very limited issues and could be resolved in as many as 170 days (40 days to answer, 40 days for rebuttal, 90 days to decision). Discovery would be limited to standing, and proceedings could be converted to full cancellations if evidence of use is produced by the respondent. There are still, however, many issues to work out. Discussions with stakeholders continue.
TPAC SLIDES May 5, 2017 USPTO Trademark Public Advisory Committee by Erik Pelton on Scribd
June 2016 TPAC photo via @USPTO on Twitter https://twitter.com/uspto/status/741340495054528512
