TPAC Quarterly Meeting Summary – February 2011

Last Friday, February 11,  I attended the quarterly public meeting of the Trademark Public Advisory Committee at the USPTO’s main campus. The following is a summary of key points discussed:

• Three new appointments to TPAC participated:
  • Maury Tepper – Attorney at Tepper & Eyster, PLLC, serving a third term on TPAC
  • Ann Chasser (former Commissions for Trademarks and President of INTA) – University of Cincinnati Associate Vice President for Technology Transfer and Commercialization
  • Deborah Hampton – Limited Brands Inc. Intellectual Property Manager
• Commissioner Deborah Cohn, in her first meeting as the Commissioner, reported on Trademark Office Activities:
  • A Notice of Proposed Rulemaking creating a pilot program for the office to study the register “deadwood” issues via post-registration renewals is close to being published
  • The USPTO’s report to Congress regarding the trademark litigation tactics study is due by March 17th. The comment period has been extended to February 14. A roundtable featuring one USPTO attorney and one private practitioner was part of a USPTO program at Wayne State University in Detroit on February 10. TPAC urged the USPTO to make its report public. The Commissioner would not indicate whether all the comments submitted would be made public or whether the report to Congress itself would be made public.
  • There is still a possibility of increased fees in the future for filings made on paper. The USPTO is studying options.
  • Phone usage by Examining Attorneys to resolve or attempt to resolve issues by Examiner’s Amendment has increased.
  • General pendency goals are being met and quality goals are being met and/or exceeding.
  • Filings for the Fiscal Year 2011 through January 31, 2011 are up 2.6% over the same time last year.
  • The issuance of electronic registration certificates, with an option for obtaining a paper copy, remains a possibility the USPTO continues to study and work on.

• Gerard Rogers spoke as the Chief Judge of the Trademark Trial and Appeal Board (no longer the Acting Chief):
  • TBMP updated version:
    • should be online by the end of March
    • will be deployed including IdeaScale which allows for public comments (see recent use of this tool for portions of the TMEP here)
    • will have better search capabilities
    • will be current as of 11/15/2010 when the drafting ceased and official review began
    • plan is to try to update going forward twice per year, possibly in June and December
  • Accelerated Case Resolution (ACR) options for inter partes parties:
    • TTAB hopes to soon post a chart on the TTAB website featuring some new “plug-and-play” options suggested by the AIPLA; and the website’s information sample cases that used ACR should be updated soon.
    • TTAB still welcomes additional suggestions for ACR “plug-and-play” options from Bar groups and from individual practitioners.
  • The Board plans to publisha request for comments regarding settlement talk and mediation issues, but is first waiting to review any comments from the trademark litigation tactics study that might be relevant before circulating the draft request.
  • TTAB is planning a request for comments in the future seeking suggestions for metrics to use in measuring TTAB performance.
  • Judge Rodgers is considering hosting roundtable discussions with stakeholders in the future to discuss these requests for comments and other issues.
  • Statistics:
    • In the 1st Quarter of FY2011, the number of inter partes cases filed increased while the number of ex parte appeal filings decreased

    • 

      Table from Judge Rodgers' presentation (see below for link to full slide deck)

    • The total duration of Board cases reaching final decision and the time taken to issue opinions both grew in the most recent quarter, Q1 FY11.
      • Median duration of ex parte appeal case having a final decision: 41.5 weeks (up from 34 weeks in Q1 FY10)
      • Median duration of inter partes appeal reaching a final decision: 169 weeks (up from 145 weeks in Q1 FY10)
    • In FY 2010, the total number of final decisions dropped sharply from FY 2009 (from 706 to 457).
  • TTAB has received approval to fill two judgeship vacancies and will soon be posting announcements seeking candidates
  • Hundreds of cases remain on the docket from before the 2007 rules changes. The great majority of them are suspended for one reason or another.
• Report by Chief Information Officer John B. Owens II:
  • TDR 2.o is available – but is not yet being linked to automatically from TARR pages, TESS search results, or Office Action emails. In March, the system should contain any audio and video files which are part of application files. The front-end the user accesses for TDR 2.0 is actually hosted in the cloud by Google. The back-end is securely hosted by the USPTO. More trademark systems will be moving to similar platforms in the future as part of ‘Trademarks Next Generation’.
  • The Assignment system (shared with Patents) experienced a significant failure after the deployment of an upgrade in November 2010. The USPTO has been patching the problems, catchup on the backlog, and looking at options for new assignment systems.
  • TESS also has some problems recently. The cause has been identified (improper data syncing when the system was overtaxed) and the USPTO has staggered background jobs related to the TESS system in order to avoid recurrence.

Related documents from the USPTO:

• FY 2011 – Trademark Performance Plan
• FY 2011 Trademark Performance Measures (Non-Examiner Statistics)
• Report on Financial Status of the USPTO
• OCIO Status Report
• TTAB FY2011 Combined

The next public TPAC meeting will be Friday June 3, 2011.