Initiatives and Events
USPTO Seminar: Using the Madrid Protocol
On Wednesday, October 23, 2013, the USPTO held a seminar from 9:00 a.m. to 5:00 p.m. on using the Madrid Protocol for filing an international application and maintaining an international registration. The target audience was practitioners who are already familiar with and have used the Madrid Protocol. The purpose of the seminar was to provide practical information on common issues that arise during the processing of the application, as well as maintaining and managing the resulting international registration. Seminar highlights included: WIPO resources; issues to consider when preparing to file and actually filing an international application; the USPTO review process for certification of the international application; International Bureau review of the international application; and issues related to changing and renewing the international registration.
You can access the webcast of the seminar by clicking on the links below. Once the page opens, double-click on the second option, "Windows Media Audio/Video file." To activate closed captioning (which will appear in the bottom left of each slide), right click on the screen, click where it says "Lyrics, captions, and subtitles" and then click in front of "On if available." If you experience any difficulties, please email TMFeedback@uspto.gov.
2. Preparing and Filing an International Application [NOTE: The presenter misspoke at minute 3:24 by indicating that the paper international application is the MM5 form. The correct form is the MM2 form, as identified on slide 2 of the PowerPoint presentation].
Public Meeting: Technical Briefing on Trademark Status and Document Retrieval (TSDR) (UPDATED)
On July 17, 2013, a technical briefing was held on the USPTO campus to discuss the inner workings of Trademark Status and Document Retrieval (TSDR). The following topics were covered: (1) the history of Trademark Application and Registration Retrieval (TARR), Trademark Document Retrieval (TDR), and TSDR; (2) why we moved to TSDR; (3) how TSDR differs from its predecessors, TARR and TDR; and (4) the basics of the technology behind TSDR. The discussion also described some of the systems that are not normally visible to the public and how they differ from those the public views.
NOTE: Due to unforeseen problems, the recording of the July 17th presentation could not be used and the presentation was later re-filmed, absent an audience; however, the questions presented on July 17th were repeated as part of the re-filming.
USPTO's Trademark Educational Outreach Program
The United States Patent and Trademark Office (USPTO) is looking to partner with colleges and universities, entrepreneurship clubs, and similar groups to present informational lectures on trademarks. The lectures will be conducted by a USPTO attorney in a location designated by the sponsoring organization. The target audiences are non-trademark attorneys, the small business community, the entrepreneurial community, and students.
The program starts by discussing how trademarks, copyrights, patents, domain names, and business name registrations all differ. It then explains, once it is established that trademark protection is appropriate, the importance of selecting a strong mark, that is, one that is both federally registrable and legally protectable. It highlights factors important when choosing a mark, such as the possibility of a likelihood of confusion, and explains the importance of doing a complete search and whether an attorney should be used. It identifies other potential grounds for the USPTO to refuse registration. Finally, it establishes what may happen if another trademark owner believes it has stronger rights in a mark and issues a “cease-and-desist” letter. It concludes with information on how to find an attorney and the distinction between what the USPTO does in the federal registration process and what a private attorney could do, and how to avoid "scams" perpetrated by companies that request fees for services not required by the USPTO.
If you would like the USPTO to speak to your group on trademarks or for more information about the program, please contact Mr. Craig Morris, Managing Attorney for Trademark Outreach, at firstname.lastname@example.org or 571-272-9692.
Prior Initiatives and Events
USPTO Roundtable: Practice Regarding Identification of Goods and Services
As part of the Trademark Operation’s continuing series of roundtable discussions to gather stakeholder views on important issues, a roundtable on USPTO’s practice regarding identifications of goods and services was held at the USPTO on February 24, 2012. The session, entitled “Future Plans for USPTO ID-Class Practice,” was open to the public and webcast.
The roundtable discussion focused on the following issues related to identification and classification of goods and services:
- The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual): The USPTO plans to redesign the ID Manual to better meet user needs and we are seeking suggestions regarding desirable features and content for the Manual. We are also seeking feedback on whether presenting the ID Manual in a hierarchical format using a drop-down list, where identifications are organized by general categories that are then divided into more specific categories, would be useful.
- The USPTO’s practice regarding the level of specificity required in describing goods and services: The USPTO seeks user feedback on whether modification of current practice is desirable. For example, rather than requiring a list of individual clothing items, should the USPTO accept a more general description of a category of clothing, such as “casual wear” or “sportswear”?
- Collaboration with industry groups: The USPTO would like to discuss the possibility of creating ongoing working relationships with key industries to ensure that the USPTO ID Manual is promptly updated with new products and services, and contains comprehensive lists of the most common goods and services in each industry.
- International databases of acceptable identifications of goods and services: Efforts are underway to develop a harmonized list of identifications that all participating countries or international organizations accept, and also to create a non-harmonized list of identifications with an indication of which countries or international organizations accept each listed item. The USPTO seeks user input on the potential value of these projects to trademark owners who seek registration in multiple jurisdictions.
Public Meeting: Continuing Legal Education Programs on Trademark Policing Measures and Tactics
On Tuesday, November 29, 2011, the USPTO hosted a public meeting to discuss the feasibility of intellectual property associations providing continuing legal education programs focusing on trademark policing measures and tactics. The impetus for the discussion was the Trademark Technical and Conforming Amendment Act of 2010 (Public Law 111-146), which President Obama signed on March 17, 2010. In addition to making technical changes to the trademark statute, this legislation required the Department of Commerce (DOC), in consultation with the Intellectual Property Enforcement Coordinator, to study and report to Congress: (1) the extent to which small businesses may be harmed by abusive trademark enforcement tactics; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.
On April 27, 2011, the DOC transmitted the requisite report to Congress. The report included three recommendations, the second of which was to engage the private sector regarding continuing legal education programs focused on trademark policing measures and tactics. Accordingly, the USPTO convened this public meeting of interested intellectual property associations and other interested stakeholders to discuss the possibility of creating private sector continuing legal education programs regarding the proper protection of trademark rights.
A summary of the November 29th meeting is available. UPDATED.
USPTO Roundtable: “A Dialogue About Trademark Disclaimer Practice”
The United States Patent and Trademark Office (USPTO) hosted a roundtable discussion on Tuesday, June 21, 2011 on trademark disclaimers, featuring panelists representing different perspectives within the trademark community. Because the underlying basis for a disclaimer requirement often is the subject of differing viewpoints, both the USPTO and applicants may expend time and resources addressing and supporting these differing viewpoints. Some have questioned whether disclaimers are sufficiently useful to merit the amount of time and resources involved. The roundtable addressed various possibilities with regard to disclaimers, ranging from eliminating disclaimers altogether, to requiring disclaimers regardless of unitariness, to maintaining the status quo. For more background, a short paper is available.
USPTO Seminar on Trademark Electronic Filing
On Thursday, April 28, 2011, the United States Patent and Trademark Office (USPTO) hosted a seminar on trademark electronic filing. The Managing Attorney of the Trademark Electronic Application System (TEAS) demonstrated the use of various TEAS forms, explored best practices, and answered questions about electronic filing.
At a later date, the USPTO plans to make materials related to TEAS available in some format.
Trademark Litigation Study
On March 17, 2010, President Obama signed S. 2968, the Trademark Technical and Conforming Amendment Act of 2010 (Public Law 111-146). In addition to technical changes to the trademark statute, this legislation also required the Department of Commerce (DOC), in consultation with the Intellectual Property Enforcement Coordinator (IPEC), to study and report to Congress: (1) the extent to which small businesses may be harmed by abusive trademark enforcement tactics and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.
On April 27, 2011, DOC transmitted the requested study to Congress. In compiling information for the Study, the United States Patent and Trademark Office (USPTO) engaged stakeholders and small businesses, including a request for submission of public comments. The Office also hosted a public roundtable to discuss these issues.
USPTO Roundtable on the Patent and Trademark Depository Library Program
On Tuesday, February 15, 2011, the United States Patent and Trademark Office (USPTO) hosted a public roundtable discussion in the Madison Auditorium (Alexandria, Virginia campus) to gather input on the use of the Patent and Trademark Depository Libraries (PTDLs) and how to more effectively utilize their services in an electronic environment. Specifically, the USPTO was looking for suggestions on what services communities would like to see PTDLs offer.
December 3, 2010 Roundtable
On Friday, December 3, 2010, the United States Patent and Trademark Office (USPTO) hosted a roundtable discussion in the Madison Auditorium (Alexandria, Virginia campus). Click here to view a video of the roundtable with captioning, or here without captioning. NOTE: Because of the size of the files, you must download the free Real Player application to play the files: http://www.real.com/realplayer/search. A transcript of the roundtable is also available.
The impetus for the program was to further the discussion within the trademark community concerning the Trademark Operation’s goal of decreasing the use of paper. The USPTO believes that paperless processing is faster, more cost effective, environmentally friendly, and less prone to human error. To this end, the Office sought to assemble “best practices” for trademark prosecution in the current electronic environment and to obtain feedback on the state of electronic communications with the Trademark Operation.
The panel of trademark practitioners focused on the following questions:
1. For those who authorize e-mail correspondence during trademark prosecution: What are best practices for docketing and routing e-mail correspondence? What are best practices for record keeping? What are the perceived advantages of receiving e-mail correspondence?
2. For those who do not authorize e-mail correspondence: Why is paper correspondence from the USPTO preferred? What are the perceived limitations or drawbacks to receiving e-mail correspondence? What technical or policy changes could the USPTO implement to incentivize the authorization of e-mail?
3. What are best practices for filing documents using the Trademark Electronic Application System (TEAS)? What is the best way to handle attachments of documents and evidence? What is the best procedure to follow when electronic filing problems are encountered?
4. What are best practices for communicating with clients, including obtaining client signatures on documents, in an electronic environment?
April 26, 2010 Roundtable
The United States Patent and Trademark Office (USPTO) and the George Washington University Law School hosted a roundtable discussion on the topic of "The Future of the Use-Based Register." Panelists and audience members explored the implications of the growing length of identifications of goods and services in U.S. trademark applications and registrations and how accurately such identifications reflect actual use or intent-to-use, following the decision of the Court of Appeals for the Federal Circuit in In re Bose Corp.,580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).
The materials for the session included the following: