TPAC (Trademark Public Advisory Committee) Meeting - February 11, 2011

Discussion with Dana Colarulli, Director, Office of Governmental Affairs:

1. Status of USPTO action on TPAC recommendation that the PAC’s be restructured.
2. Status of USPTO action on TPAC recommendation that PAC’s be allowed to aggregate time for the purpose of counting 60 days.
3. Report on any recent Congressional action concerning USPTO funding, particularly ending fee diversion and granting total fee-setting authority.
4. Update on any other Congressional actions of note to the trademark community.

Discussion with Debbie Cohn, Commissioner of Trademarks:

1. Communicating with trademark examining attorneys.
   • Discussion regarding trademark examining attorneys answering the phone when called.
   • Discussion regarding expectations as to when trademark examining attorneys return calls, so that such calls will be made during normal working hours on Monday-Friday.
   • Status of transition to requiring examining attorneys to put their email addresses on office actions.
   • Status of making it possible for application filers to provide a second email address so that, if one goes to a general trademarks email box, the other might go to a person who the trademark examining attorney may be able to contact directly.
2. Update regarding ensuring accurate descriptions of goods and services (i.e., minimizing deadwood), especially in the wake of the Federal Circuit decision in In re Bose Corp.  Where does the planned quantitative test of deadwood volume stand?
3. Status of the Congressionally-mandated study on trademark litigation.
4. Update regarding any possible upcoming changes to trademark fees, such as for paper or electronic filings.
5. Quality Issues – Discussion regarding the excellent first office action initiative and any other programs that target substantive quality of office actions.
6. Report on current Trademark Operation speed and quality performance metrics.
7. Status of this TPAC goal – get the Official Gazette published in HTML rather than in PDF.
8. Discussion of progress toward the TPAC goal of having electronic certificates of registration with an option to obtain a paper certificate.
9. TMEP Issues.
   • Discussion of progress toward the TPAC goal of having the TMEP be continuously up to date.
   • Report on progress on creating a parallel “wiki” TMEP.

Discussion with Harry Moatz and Will Covey, Office of Enrollment and Discipline:

1. Update and discussion of USPTO action, if any, concerning trademark filings being made by online non-attorney services and/or non-attorneys working for online services.

Discussion with Gerard Rogers, Chief Judge of the TTAB.

1. TBMP issues:
   • Status of releasing new version of TBMP.
   • Report on plans for updating the TBMP every six months.  When will the next update be released after the coming major revision?
   • Status of launching a parallel, “wiki” TBMP.
2. Report on recent developments with ACR, including development of “plug-and-play” procedural options.
3. Update on TTAB’s draft of RFC on settlement.
4. Report on current TTAB speed statistics and case volume statistics.
5. Update on any recent TTAB actions regarding cases that have lingered on the docket for a very long time.
6. Status on filing of TTAB judgeship vacancies.

Report on Financial Status of the USPTO:

1. Discussion on the financial status of the USPTO, including the financial forecast for FY 2011 and FY 2012.
2. Update on funding surplus cost allocation.

Discussion with John Owens II, Chief Information Officer:

1. Discussion of status of, and plans for, new computer system for the Trademark Operation – Trademark Next Generation (“TMNG”).
   • Is TMNG on schedule?  Is TMNG progressing at a good pace?  How far will it have progressed by the end of calendar year 2012?
2. Report on status of pending work requests previously submitted by Trademark Operation.
3. VoIP issues for trademark examining attorneys.
   • Status of problems.
   • Update on upgrades.
4. Status of stabilizing desktop/laptop configurations, including Windows 7/legacy issue.
5. Handling of trademark assignments.  Shouldn’t they be handled by the Trademark Operation?  Shouldn’t fax no longer be used by the USPTO to communicate about this issue?

Public comments on any other issues (if any).  We’ll extend this time if there are a lot of comments or questions..