International Trademark Association Annual Meeting
James E. Rogan
Under Secretary of Commerce for Intellectual Property
Director of the United States Patent and Trademark Office
May 20, 2002
Thank you, Anne, for that kind introduction. Good morning everyone. It's good to be here with you today. I bring you greetings from the president of the United States and from the Secretary of Commerce Don Evans who regrettably is unable to join you today. He has been sent on an important mission to Russia by President Bush, but he has asked me to express his special welcome and appreciation to you.
I know for many of our trademark employees, INTA's Annual Meeting is something of a "reunion" week. From what I understand, there are a fair number of former USPTO trademark examining attorneys here today. And this is something of a reunion for our Commissioner for Trademarks Anne Chasser. She did a reverse commute, so to speak—we stole Anne away from INTA a couple of years ago. Hopefully there are no hard feelings.
Trademarks play such an important role in our society—signifying quality, dependability and consistency—and, quite frankly, they're a lot easier to explain to my twin 9 year-old daughters than patents!
As a history buff, I'm intrigued by trademarks' history. The earliest known examples of trademark date back to the Stone Age. Cave murals in southwestern Europe indicate that bison were branded with marks in order to identify their owners.
The history of trademarks in the United States is quite interesting, too. 230 years ago, in 1772, just a few miles from here, a Virginia farmer petitioned the Fairfax County Court to allow him to use his name - G. WASHINGTON - as a trademark for flour. So all of you who are practitioners in the field of trademarks are in excellent company.
Today—as commerce becomes increasingly global—the importance of trademarks is greater than ever before. They protect their owner's goodwill and the reputation attached to the trademark. And, most importantly, they help consumers make educated decisions. INTA represents a commitment to the protection of trademarks that is truly global. So this morning I'd like to share with you the initiatives the USPTO is undertaking to enhance trademark protection around the world, and to improve the quality and efficiency of our operations. It's a full plate, as many of you know.
On the policy front, in keeping with the Bush administration's trade goals, the USPTO has a global perspective. We are active in a number of different venues, working with your offices around the world to streamline and strengthen protection of trademarks. For example, the USPTO actively helps to negotiate international IP treaties. We also provide technical assistance to foreign governments that are looking to develop or improve their IP laws and systems. In addition, we seek to train foreign officials on intellectual property enforcement.
Our main goal in the international arena is to achieve greater consistency in IP protection around the world. Currently, we are working with other members of the world IP community to develop consistent rules that will benefit trademark owners and consumers worldwide. For example, right now in Geneva, USPTO representatives are participating in WIPO's Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. And this week, the Standing Committee is discussing the relationship of geographic terms, names of intergovernmental organizations, and personal names to Internet domain names.
Next week, the USPTO will represent the United States when the Standing Committee beings preliminary discussions on amendments to the Trademark Law Treaty and on areas of possible substantive trademark harmonization.
One topic that I suspect you are even more eager to hear about is the status of when the United States will sign onto the Madrid Protocol. I can report that we are working closely with Congress to implement international IP agreements such as the Madrid Protocol. Once ratified by the Senate, the Madrid Protocol will allow U.S. trademark owners to preserve their valuable filing date in any number of countries by simply filing one application with the USPTO—in English—with one set of fees in U.S. dollars. This "one-stop-shopping" system for trademark filing will be a great step forward. It will benefit trademark owners around the globe by cutting red tape and lowering costs.
United States accession to the Madrid Protocol will also provide clear benefits to trademark practitioners. Every potential user of the Madrid system offers trademark practitioners the opportunity to provide valuable counsel and guidance. Since the Madrid Protocol is really just another choice available to trademark owners, these individuals will need education and guidance to help them make an informed decision about whether a Madrid Protocol filing best suits their needs.
As the INTA governmental affairs team and Jon Kent know all too well, ratifying and then implementing the Madrid Protocol has been a long time in the making. Hopefully the end of this long process is close at hand. The resolution to ratify the protocol was approved by the Senate Foreign Relations Committee last November, but it still awaits final action by the full Senate.
Also, my former colleagues in the House of Representatives passed its version of the implementing legislation over a year ago, and the Senate Judiciary Committee approved an amended version of this legislation last July.
All things considered, we're hopeful that soon Congress will approve both measures. However, as I know all too well, in Congress, all activity is predictable—except everything that happens.
Speaking of guarantees, I can guarantee that when it comes to our trademark operations, we are fundamentally changing the way we do business. As the world greatly expands its use of the Internet, at the Patent and Trademark Office we are following suit. As you know, the USPTO is responsible for processing hundreds of thousands of trademark applications each year.
And, as you also know, the USPTO has committed to two important deadlines. First, we strive to issue first action responses within three months from the time an application is received. And second, we make sure to issue a final disposition of an application within 13 months from the date it is filed.
As is always the case, there is room for improvement. Currently, the pendency to first action stands at 3.6 months and total pendency currently stands at 17.4 months. Not bad, but we plan on getting better—without sacrificing the quality of our work. Our customers deserve—and our economy demands—that we provide a quality product in the shortest possible time. That's our mission at the USPTO.
One might ask: How can the USPTO, or any other office for that matter, provide this level of service without increasing costs? And what services should the USPTO provide to its customers that it is not offering right now? More glaringly, what current processes are relics better left behind in the last century?
To be sure, management reform in the federal government is a top priority for this administration. As President Bush has said, "To reform government, we must rethink government." That is exactly what we are doing at the USPTO.
President Bush has made clear that the need for reform is urgent, and his vision for reform is guided by three fundamental principles. First, government should be citizen-centered, not bureaucracy-centered. Second, government should be results-oriented. And third, government should be market-based, actively promoting innovation at every turn.
The president has called for a government that is active but limited—a federal government that focuses on specific priorities—and does them well. That same spirit should be embraced when it comes to the work of reform. Rather than pursue a wide array of management initiatives, government agencies should identify the most significant problems—and solve them, while focusing on the needs of the customer. At the Patent and Trademark Office, we intend to fulfill the president's vision.
Consistent with the spirit of government reform and re-thinking the ways we do business, is our commitment to electronic government—or e-commerce, as it is more commonly known. The USPTO already is a leader in e-commerce. In fact, we're much further along than most other industrial property offices.
Currently, about 30 percent of the trademark applications we receive are filed electronically through our award-winning Trademark Electronic Applications System (TEAS). But we're planning to boost that to 50 percent by the end of this year.
Notably, trademark applicants from outside of the United States are among the most active users of electronic filing. Canada and the United Kingdom filed record numbers of electronic trademark applications in 2001. Users from Switzerland, Germany, France, Australia, and Japan—and many nations in South America—also take advantage of electronic filing in large numbers.
We've even received electronic filings from children, so for those of you who say that our system isn't truly user-friendly—please take note. E-filing gives the world access to the USPTO twenty-four hours a day, seven days a week, every day of the year. An entrepreneur busy at work in Singapore can file an electronic trademark application at the stroke of midnight here in Washington, D.C. That's government service at its best.
In addition to electronic filing, our website—which receives over 36 million visits a month—also offers many other services for our trademark customers. For instance, you can search the status of pending and registered trademarks, or conduct a preliminary search prior to filing an application. You can also access examination manuals and regulations and obtain weekly information on when trademarks are published, registered and renewed.
And just last month, we expanded our e-commerce offerings even more. Now, the Response to Office Action form allows applicants to respond to an Examining Attorney's Office Action or pay an additional fee to enable an Examiner's Amendment on-line. Even better, the Preliminary Amendment form now allows applicants to electronically submit a Preliminary Amendment prior to examination.
To ensure that our trademark operations are as efficient and user-friendly as possible, we will continue to aggressively move to e-commerce services.
And here's our guarantee: To help ensure that we meet our pendency goals, our trademark examining operation will be transformed from a paper-based process to a fully electronic operation by October 1, 2003. It's no secret that the USPTO is drowning in paper, and it's not in our customers' interest or in our agency's best interest to continue down this path.
It's time to enter the 21st century. It's time for our trademark operations to function in global commerce—on the Internet.
During my tenure as under secretary and director, I intend to show that the USPTO exemplifies the citizen-centered, results-oriented, market-based government that President Bush promised to deliver. We will operate the USPTO like a business that is servicing customers.
It's especially fitting that trademarks—such a fundamental part of market-based economies—takes the lead in showing how it's done.
Through our on-going efforts to provide the highest levels of customer service, our e-commerce initiatives, and our coordination with industry professionals such as you, we are showing that government can, indeed, reform. And by keeping our customers in focus, those changes that benefit them will benefit our office.
I want to again thank INTA for the support they have provided the USPTO throughout the years. We need INTA's continued input and guidance as we move forward on our e-commerce program—and into the 21st century. Thank you for inviting me, and I hope you all have a successful and productive meeting here in our nation's capital.