Last Friday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA. I attended the meeting in person. The following are the highlights of the presentations and discussions; the full slides are available at the end of the post:
Andrei Iancu – Director of the USPTO
- Recently testified to congressional committee
- Trademarks division has met all pendency and quality goals for 12 consecutive years
- Working on addressing issues related to increase in filings from China
- Thanks to Senators Hatch and Coons for sponsoring legislation that would extend USPTO’s fee setting authority (will expire in Sept. 2018 if not extended)
Commissioner for Trademarks, Mary Boney Dennison
- currently 875 employees in Trademarks, 579 are examining attorneys
- New group of examiners starting May 14th; Likely hiring 61 total in FY2018 year
- Plan to hire more examiners again next Fiscal Year, likely 80 or more
- Trademark filings are up about 13% this Fiscal Year to date, targeting 8-9% for the full Fiscal Year
- While 99.9% of new applications are filed electronically, fully electronic application process for approximately 88% of applications
- Planning for mandatory electronic filing by early 2019
- Notice of Proposed Rulemaking coming out soon
- Implementation likely by early 2019
- Planning for mandatory electronic filing by early 2019
- “Big Data for IP Act” introduced by Hatch and Coons to extend fee setting authority
- TEAPP – allows for continuation of telework program (75% of examiners work at home); bill passed the house, waiting for Senate
- Some TEAS Improvements coming this summer
- To help avoid when correspondence address of record is changed
- Email will be sent to both new and old address of record when a change is filed
- Coming soon to website – a form finder tool, and an EZ file for ITU word marks using TEAS RF
- Trademark app from USPTO expected to be released later this year
- ID Manual tool updated in April 2018 with some enhancements
- US Counsel Requirement for Foreign Application – notice of proposed rulemaking coming later this year, being drafted now
- In Re Brunetti decision from CAFC re Section 2(a); USPTO considering Petition for Cert. with the Supreme Court
- Proof of Use Audit Program (for Section 8 or 71 filings)
- 1781 first actions have been sent since launch Nov. 1, 2017
- Preliminary finding through March 2018
- 32% of 1(a) registrations have deleted goods
- 47% of Section 66(a) registrations have deleted goods
- Fraudulent Solicitations – Continuing to raise awareness
- USPTO is sending 2 lawyers to DOJ to work on criminal prosecutions
- Several criminal convictions last year
- USPTO participating in an Inter-agency working group on the topic
- Improvements to Customer Experience – working in a variety of ways to make better for users and customers of the trademark office
- Specimen Issues: fake specimens are on the rise and raise several issues (Fraud? OED discipline? Failure to use in commerce?)
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- Specimen protest pilot program – can email to TMSepcimenProtest@uspto.gov
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- National Trademark Expo – July 27-28
- Keynote speaker will be Kareem Abdul-Jabbar
- TM5 – will be meetings at INTA later in May in Seattle
- TM5 inviting other counties to use the “Common Descriptors Project” sharing icons for status indication
- TM5 ID list (acceptable in all 5 countries) can be found at tmfive.org
- In USPTO ID Manual, the “T” in “TM5” column indicates it is acceptable to all 5
- Focus on China
- Great increase in filings from China over last few years
- Almost doubling each year
- Huge percentage from Shenzen
- Huge increase in individual filers (without multiple applications)
Policy and International Update – Shira Perlmutter
- WIPO
- Geographical Indications protection issues and concerns from US and continual topic
- Protection for country names and “geographic names of national significance” still a topic/concern of many countries
- Three proposals from Jamaica, Peru, and group of 11 countries
- GI Trolls? Working to ensure that dairy industry concerns are dealt with
- BREXIT – in March 2018, draft agreement circulated that would continue EU trademark rights in UK post-Brexit; UK will recognize priority dates as well; would not require use in the UK; renewals in UK will be due when they would have been due in EU; rights will also apply to Madrid Protocol filings
Legislative Update – Dana Colarulli
- Director testified in front of Senate committee recently
- Questioned on a variety of issues, including increase in filings from China
- Video: https://www.judiciary.senate.gov/hearings/watch?hearingid=1A28E69E-5056-A066-6058-D58BEB3D6D6B
- Budget issues – appropriated for FY18, ceilings set for next two budget years
- BIG Data for IP (S.2601) – would extend fee setting authority
- Small Business Innovation Protection Act (S.791 and H.R. 2655)
- Would direct SBA and USPTO to develop and present training materials for small business concerns related to domestic and international protection of IP
- Senate bill was approved by committee; House bill was approved by committee; USPTO supports the bill
Chief Financial Officer update – Anthony Scardino
- FY2018 – USPTO fully funded, would keep any fees collected above the budget
- 5% increase in fees collected thus far this fiscal year, but just under USPTO’s projections
- Projected to end year with $132M in reserve
- FY0219 budget was submitted in February 2018
- Fee estimate $3446M for USPTO
- Includes hiring 80 examiners
- FY2020 budget
- Draft budget underway, to be submitted to OMB in September 2018
Trademark Trial and Appeal Board (TTAB) Update – Gerard Rogers, Chief Administrative Judge
- Filings have all increased in FY2018
- Pendency and inventory of contested motions are up a bit over FY2017
- End-to-end pendency time is down
- In the process of hiring 2 or 3 interlocutory attorneys, was over 100 applicants
- Also hiring some paralegals
- Will likely be hiring Judge positions later in the year
- Standard Protective Order
- Has been in effect since June 24, 2016
- Comments were due by 1/31/2018; four comments were received
- Going to continue to solicit comment
- Disagreement on whether to change presumption that precludes access by in-house counsel to “Attorneys’ Eyes Only” information or documents
- Upcoming IT changes
- Enhancements for legacy systems due late June/July 2018
- Board now has an internal schedule or docket to see and update the schedule of a proceeding
- Simplified consent motion filing forms (30, 60, 90 day extension/suspension) and system will display the proposed schedule in the order
- Most consent motions to extend/suspend will then be granted automatically
- Will include a new form to relinquish an extension of time to oppose
- Streamlined non-use or abandonment cancellation proceeding
- After public comments were digested by TTAB, Board has decided to pursue a pilot project
- TTAB will identify and screen for possible cases featuring only just these issues after an Answer is filed
- Both a Judge and interlocutory will be involved in discovery conference to try to move cases to expedited proceedings using ACR tools (that particular Judge then cannot sit on the final panel deciding the merits)
- Developing slides and information to detail the pilot for the public
OCIO Update – David Chiles (Acting CIO) and Robert Harris (Acting TMNG Portfolio Manager)
- Updated the status of updates and enhancements to internal USPTO systems and tools
- Anti-fraud enhancements include the upcoming notifications of change in correspondence
- TMNG tool for examiners – overall training/rollout target of Q2FY19 being reviewed due to running behind schedule by 2 months, related in part to CK Editor (word processing tool)
- No questions asked by TPAC members or public
Next meeting – July 26, 2018
Trademark Public Advisory Committee (TPAC) Slides May 2018 by Erik Pelton on Scribd
