TPAC (Trademark Public Advisory Committee) - June 3, 2011

Dana Colarulli, Director, Office of Governmental Affairs:

1. Report on any recent Congressional action concerning USPTO funding.

2. Update on any other Congressional actions of note to the trademark community.

Tony Scardino, Chief Financial Officer:

1. Discussion on the financial status of the USPTO, including the financial forecast for FY 2012.

2. Update on any recent fee study activities and any action that might be taken in light of any findings.

Discussion with Debbie Cohn, Commissioner of Trademarks.

1. Discussion regarding Trademark Operation disclaimer practice.

2. Report on current Trademark Operation speed and quality performance metrics.

   • New Trademark Operations dashboard.

3. Communicating with trademark examining attorneys.

   • 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.

4. 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?

5.  Update regarding any possible upcoming changes to trademark fees, such as for paper or electronic filings.
6.  Status of this TPAC goal – get the Official Gazette published in HTML rather than in PDF.
7.  Discussion of progress toward the TPAC goal of having electronic certificates of registration with an option to obtain a paper certificate.
8.  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.  How is IdeaScale ® working out so far?

Cynthia Lynch, Administrator for Trademark Policy & Procedure.

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 Gerry Rodgers, Chief Judge of the TTAB.

1. Report on current TTAB speed statistics and case volume statistics.

2. Status on filling of TTAB judgeship vacancies.

3. 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 recent major revision?

   • Status of launching a parallel, “wiki” TMEP.

4. Update on TTAB’s Notice of Inquiry on settlement.

5. Report on recent developments with ACR, including development of “plug-and-play” procedural options.

6. Update on any recent TTAB actions regarding cases that have lingered on the docket for a very long time.

7. Report on status of coming RFC or Notice of Inquiry regarding possible alternative fast-track for TTAB cases.

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.

Adjourn public meeting.