Trademark E-Government

Action:

Trademarks should continue with the planned implementation of e-Government.

Background Information:

Trademarks is scheduled to implement an electronic file management system and begin e-Government operations on November 2, 2003 (fiscal year 2004) concurrent with the implementation of the Madrid Protocol in the U.S.  The current concept for development of electronic file management and moving to electronic operations is to use rapid prototyping, review by the users for proof of concept, and modular release schedules throughout the fiscal year 2003 development cycle until the entire system is in place at the beginning of fiscal year 2004.  The funding for the final phase of Trademarks' move to e-Government was included in the President's 2003 budget request but funding to prepare for the system and process changes that are necessary for the implementation of the Protocol were not.  Accordingly, these costs will be absorbed through the redirection of resources and planned cost savings.

Beginning in the mid-1980s, Trademarks has been investing in information technology.  However, improvements in productivity, quality and reductions in pendency related to these investments in technology have not been achieved at levels satisfactory to applicants and other stakeholders.  In 1993, Trademarks adopted a business reengineering plan (see attachment) that was focused on applying technology to internal and external processes in a series of modules that would ultimately transform the organization from heavy reliance on paper to leveraging information system technologies to replace paper-based processes.  By 2001, a highly successful electronic filing system was in place and an electronic publication system allowed Trademarks to concurrently publish its Official Gazette on paper and on the Web. 

Although there is significant use of computers in the examination area for activities ranging from searching to tracking files and measuring production, examination processes are still dominated by paper.  Trademarks will move aggressively over the next year to fully implement e-Government in fiscal year 2004 as the primary means of doing business with applicants and registrants, and as the sole means for processing work inside the examining operation.  Applicants who choose to use Trademark electronic systems will see improvements in timeliness, quality and services.  Redundant paper and electronic processes will be eliminated in favor of processes designed to perform work electronically.  Potentially, the most significant obstacle to success is acceptance of this change in doing business by applicants and employees. 

This will complete a ten-year business process reengineering plan[1] to move Trademarks from primarily doing business with paper to doing business digitally.  With the implementation of electronic processing in fiscal 2004, Trademarks is committed to reducing pendency to first action to two months and bringing disposal pendency down to 12 months by 2006.  It is anticipated that costs for handling applications and related materials, and reliance on increasing numbers of employees or contractors to handle increases in filings, will be substantially reduced as the reliance on paper disappears from internal processes.  Additionally, applicants will see improved quality of products as Trademarks moves to using electronic data submitted by applicants to support examination and publish end products. 

Options Considered:

Accelerate the development schedule.  A review of the project schedule by Trademarks and CIO did not reveal any areas where additional resources or effort would substantially advance the project.  This option is not recommended because the return on investment would be minimal and there is not a clear indication that there would be positive results. 

USPTO Recommended Course of Action:

Trademarks should continue to follow the strategy that was put forth in the USPTO fiscal year 2003 Budget and complete its plan to develop an electronic file management system - Trademark Information System (TIS) - and begin e-Government operations in fiscal year 2004.  With the implementation of TIS, Trademarks will complete its transition from a paper-based operation to an e-Government operation.  With the exception of TIS, the underlying systems necessary to support this move from paper-based processing to electronic processing are either in place or nearing completion and the organization has a high level of confidence that e-Government operations will be implemented early in fiscal year 2004. 

Projects in fiscal years 2001 and 2002 have focused on:  (1) upgrading the existing trademark electronic filing system, (2) laying the foundation for moving from paper file wrappers to electronic file wrappers, and (3) electronic publication of the Trademark Official Gazette.  Specifically, the successful Web-based electronic filing system, the Trademark Electronic Application System (TEAS), which was implemented in 1998 using SGML (Standard Generalized Markup Language) tagging structures, is being upgraded to use XML (Extensible Markup Language).  This change, completed in November 2002, will facilitate the transfer and exchange of data between applicants and other Intellectual Property Organizations.  In this same time frame, additional forms are being added to the system that will essentially allow applicants to complete all transactions with the USPTO using structured, XML-based formats for all communications, e.g., responses to examiner office actions, changes of address, petitions to the Director, etc., and to allow examiners in Trademarks to send office actions to applicants using electronic communications. 

Finally, Trademarks is planning to implement Simple Object Access Protocol (SOAP) or a similar technology as the gateway or "electronic envelope" to move XML-tagged communications in and out of the Office.  Moving to SOAP, XML will provide external parties with greater flexibility to design their own "forms" for communications as long as they use XML data tags established by the Office.  This environment will maximize the Office's flexibilities for data exchange with applicants and registrants.  It will also provide applicants and registrants with an improved capability to incorporate trademark documents into their existing electronic docketing systems, removing another "barrier" to potential adoption of electronic communications with the USPTO. 

In conjunction with the upgraded document formats, based on input from early adopters of the electronic filing system, electronic payment methods were upgraded in November 2001 from solely relying on electronic credit card payments to the use of the automated clearinghouse and electronic debt of deposit accounts.  This upgrade removed a significant complaint from law firms regarding the sole use credit cards for electronic payment.  The upgrade essentially offers the same capabilities they have using paper filings. 

Trademarks is pursuing changes that will encourage applicants and registrants to use electronic filing over using paper.  In 2002, changes were implemented that eliminated the provision under CFR 1.10 that allowed a filing date to be established based on the date of deposit of express mail with the U.S. Postal Service.  For all incoming paper documents and electronic documents, the date of receipt in the USPTO is the filing date.  Further, Trademarks will propose a higher fee for filing paper applications, where an electronic form is available for use, commensurate with the cost of handling paper.  It is believed these two changes will encourage greater use of electronic systems. 

Early in 2001, Trademarks upgraded its electronic publication system for the Trademark Official Gazette (TMOG).  The previous publication environment that was adopted in 1985 had used electronic text data from internal systems but still required that a paper copy of graphic drawings of marks, approximately 40 percent of the marks registered, be removed from the file and forwarded to the Government Printing Office (GPO) for composition of the TMOG.  In April 2001, Trademarks began providing GPO with an encapsulated postscript file containing electronic text and images to print the TMOG.  At the same time, in 2001, Trademarks also began "publishing" an electronic version of the TMOG on the USPTO Web site using Portable Document Format.  In 2003, Trademarks will propose that the electronic TMOG published on the USPTO Web site be designated the "official publication" for marks published for opposition and all other purposes.  After the electronic edition becomes the official publication, the registration cycle could be reduced by up to six weeks or more.  The current registration cycle is 18 weeks (six weeks of prepublication GPO processing, four weeks for publication for opposition, two weeks to process opposition papers and withdraw files from registration, and six weeks for GPO to process and print registration certificates). 

In April 1999, Trademarks began capturing all incoming new applications, regardless of whether they were filed on paper or electronically, in the Trademark Information Capture and Retrieval System (TICRS).  Later, retrieval capabilities were added to all desktop systems in Trademarks which allow employees to electronically view applications "as filed" at their desk.  In February 2002, a pilot was implemented to capture all incoming correspondence in TICRS and later in 2002 all outgoing correspondence was added to TICRS.  At that point, Trademarks was essentially creating "electronic file wrappers" for all applications pending in the examining operation that have an action or event requiring input from the applicant or the Office.  In 2003, electronic application records in TICRS will be delivered to examining attorneys for initial examination rather than paper file wrappers.  With this implementation, the final move from reliance on paper processes to electronic processes will begin in Trademarks.  The performance appraisal plan for all examiners in Trademarks will be amended to focus on using electronic communications as the primary means of communication with Trademark applicants and registrants. 

As indicated previously, in a final step to move from paper-based operations to electronic operations, Trademarks will develop and implement an electronic file management system known as the Trademark Information System (TIS) in fiscal year 2004.  The project will be the last phase in a ten-year effort to move to e-Government processes in Trademark Operations.  In conjunction with implementation of TIS, current paper-based processes in the law offices and support services will be consolidated into a new electronic law office structure.  With the exception of Post Registration operations, law office processes will be restructured with the goal of eliminating task-oriented processes and reducing cycle times by consolidating processes and leveraging electronic systems to the maximum extent to improve services to applicants and registrants.  With the implementation of TIS, a scanning on demand operation will be established to capture any pending paper files for entry into TICRS so all pending paper file wrappers can be removed from operational areas and moved to a "paper repository."  TIS will play a significant role, and is a key element, in the effort to improve productivity, quality and reduce cycle times in Trademarks by the end of fiscal year 2004. 

With the implementation of TIS in 2004, examiners will be required to communicate electronically with applicants on all matters unless the applicant specifically opts out of using electronic communications.  New applications will be assigned from a single process queue as examiners "request" new work, responses will be automatically routed to examiners for appropriate action, and examiners will be responsible for the accuracy and completeness of the electronic record for every application they approve for registration.  Electronic communication and transactions will facilitate reduced cycle times and result in substantial increases in quality of products without corresponding investments in quality control activities.  In fiscal year 2004, Trademarks will designate the "electronic file wrapper" as the official record for all records maintained in the Trademark Operation. 

In fiscal year 2004, the goal is to maximize the use of electronic communications for filing applications for the registration of trademarks and for the maintenance of federally registered trademarks.  Success is dependent on a high level of adoption of electronic communications by applicants and registrants, and by employees.  The goal is to have 80 percent or more of all communications being conducted electronically in 2004. 

Risks:

·       Tight delivery schedules and complex development effort

·       Availability of fiscal year 2003 funding for development work

·       Implementation of the Madrid Protocol with concurrent design and implementation of TIS during fiscal year 2003.

Return on Investment:

·       Estimated benefits:

-        First Action on Merits in 2 months instead of 3 months

-        Disposal by registration, Issue of Notice of Allowance or abandonment in
12 months instead of 13 months

-        Improved quality of information in electronic data bases - electronic submissions will be entered as received

-        No lost files or papers

-        Prompt access to new applications and registrations by applicants and registrants

-        Minimize need to increase or decrease contractors and/or government employees to handle variations in workload

Attachment

First Edition 1993; Second Edition 1996.

Change alone is unchanging.  Heraclitus (c. 535-c. 475 BC).

Change is not made without inconvenience, even from worse to better.  Richard Hooker (1554-1600).

Most of us are about as eager to be changed as we were to be born, and go through our changes in a similar state of shock.  James Baldwin (1924-87).

Change and Trademarks:

Perhaps the first question that might be asked regarding making changes in Trademarks is:  Why change at all? My response is that we cannot continue to do business as we have in the past and continue to provide high quality services to our customers.  Put quite simply, the office is drowning in paper.  Between 1989, when the Trademark Law Revision Act was implemented, and the end of Fiscal 1996, the number of new applications filed in the office increased by 141% (from 83,200 to over 200,600), the number of pending files increased by 254% from just under 100,000 to over 350,000, and our work force, including contractors, only increased by 87% from 272 to 509.  Faced with increasing numbers of applications, and restrictions on adding employees, we began the initial planning for changing how we do business in Trademarks in 1993.

A reengineered concept of operations for processing applications for the registration of trademarks is described in this document.  It is an iteration of a "To-Be" Trademark process model that has evolved over the past three years.  The model is based on input from teams of Trademark employees who currently perform the various tasks related to the processing of applications, and on information gathered in focus groups held around the United States with applicants and their representatives.  This document outlines the process that an application will follow in the future-from receipt by the United States Patent and Trademark Office (USPTO) to registration.  This new concept of operations combines information technology (IT) and process restructuring as the primary performance improvement drivers.  The To-Be model proposes that, fully implemented, the pendency to first action goal of three (3) months would be reduced to one (1) month or less.

The Trademark To-Be design assumes that electronic filing; electronic data interchange between applicants, registrants and the USPTO; and electronic file wrappers with a fully integrated electronic file management system will be implemented in Trademarks shortly after the turn of the 21st century.  Essentially, the hardware and software supporting Trademark business processes will manage and maintain an electronic version of all information currently contained in paper "file wrappers."  For most processes, a number of different alternatives or options were proposed and one was adopted to establish a direction for managing change.  This paper provides a summary of the "options" that are currently providing direction for process changes in the Trademark business. 

Accept New Application:

Using available networks, applicants will directly transmit completed applications for the registration of trademarks, and other filings, directly to USPTO file server addresses.  The filing(s), using USPTO "standard formats," will clear various edit, validation, and viruses checks and immediately be routed for further processing.  Applicants will receive an immediate electronic acknowledgment of the receipt of the filing.  Fees will be paid electronically.

All applicants will be encouraged to file applications for the registration of trademarks and all other materials, including responses to office actions, filings under Sections 7, 8, 9 and 15, intent-to-use filings, etc., using electronic mail (e-mail) over available communications networks, e.g., the Internet/World Wide Web, using a modem over telephone lines, etc.  The USPTO will also accept applications on paper forms that use structured formats.  To encourage electronic filing over networks, applicants may receive a discount on fees associated with the filing and/or priority processing.  For instance, an electronic application received by midnight Eastern Standard Time (EST) on a particular day will receive that filing date and the USPTO will immediately acknowledge receipt of the application by return e-mail.

All paper applications will be submitted using mandatory, standard formats.  The formats will be based on "tags" that identify all information in the application and enhance the ability of the USPTO to accurately capture the information for its automated systems.  Data contained in the applications will be captured using scanning (imaging) and optical character recognition (OCR)/intelligent character recognition (ICR) technology.  The USPTO will maintain both an electronic "image" of the paper and use OCR/ICR technology to extract data from the papers that will be used to support character-based electronic data bases required for publication of the mark for opposition and file management.

Drawings containing figurative or design elements, foreign registration certificates and similar evidence may only exist on paper.  If submitted to the USPTO as a paper document, they will be captured electronically as an image and indexed to other electronic data related to the application.  If the USPTO continues to require signatures on trademark applications, a process for submitting electronic signatures to the USPTO will be adopted.

All specimens will be scanned as an image or digitally photographed and submitted with the electronic application.  The submission may be in color or black and white.  The only exception will be for sound and scent mark specimens.  If the image of the specimen is not legible, the applicant will be notified during examination.  Bulky specimens will only be accepted in the form of a digital photograph in electronic applications and as photographs in applications submitted on paper.  Unless the applicant is responding to a specific request by the examiner, if the USPTO receives a bulky specimen it will be disposed of upon receipt in the Agency.

The USPTO will accept color drawings.  However, a statement clearly describing the color or colors contained in the mark must accompany them.  Any specimens submitted to support registration of the mark shown in color must also be in color.

It is anticipated that a small number of applications will still be submitted on paper and, of those, a smaller number, such as those that are handwritten or on damaged forms, will not be readable using OCR/ICR.  The paper will still be captured as an "image," but the information needed to support internal systems will be key-entered into the system by an "exception processing" team in the Trademark Intake Section.  These employees will also verify that paper applications and other filings are entered in the USPTO's electronic systems without changes or errors in the application data.

All documents or materials received by the USPTO, including lengthy, free-form attachments to applications or other papers, will be scanned as an image and attached electronically to the application file.  Filers will be able to determine the processing status of their applications through an electronic bulletin board and/or automated telephone service.  An electronic copy of all incoming communications will be archived by the electronic system to provide a historical record.  Paper filings will be retained after input into the system until the information can be verified as correctly entered into the system during Intake processing.  At that point, the materials will be identified as appropriate for recycling or continued storage.

Process Fee Payment:

Applicants filing applications and papers using electronic transmission will be required to pay fees using Electronic Funds Transfer (EFT), credit card, or deposit account authorizations.  The applicant will be required to indicate the method of payment on the application form.  There will be immediate funds verification for filings transmitted electronically.  A control number will be assigned to each new application for matching the application with corresponding payments in the USPTO's Revenue Accounting Management (RAM) system.

When the payment arrives for an application or paper that is not using EDI, the payment will be documented with the corresponding application control number and the fees will be processed in the Intake Section.  For applications filed on paper forms, the following forms of payment will be accepted:  electronic fund transfers (EFT), deposit account authorizations, checks, money orders, cash, debit cards, and credit cards.  Electronic forms of payment and deposit account authorizations will be processed into the RAM system at the time the underlying application is processed by the USPTO.  Walk-in payments submitted with applications will be accepted at designated USPTO areas.

Prepare New Application:

Once an application is available in the electronic system, it will undergo the following automated processing:

1)               Primary formalities check for minimum statutory requirements and fees to determine if the applicant receives a filing date;

2)               Assignment of a serial number/control number;

3)               Presumptive classification of goods and services and determination that the correct number of fees have been submitted; and,

4)               Expert system review, including:

·       secondary formalities review,

·       descriptive search using various dictionaries or encyclopedias (standard dictionaries, computer dictionaries, geographic dictionaries, specialized dictionaries, etc.),

·       atlas with description of the area and products for which the area is known,

·       surname search using telephone listings,

·       foreign translation search with word limit (e.g., French, Spanish, German, Italian),

·       co-pending search:  Same applicant plus:  a) same mark, or, b) goods and services with at least one match,

·       likelihood of confusion "dead-on" search ("dead-on" for entire mark using syllable and phonetic searches),

·       search of data base for disclaimers of the same word(s) in other marks,

·       search of database for abandoned applications with the same mark and goods/services.

Applications not meeting minimum filing date requirements will be flagged, and a computer-generated deficiency letter will be sent to the applicant.  To meet minimum filing requirements, the application must arrive using the USPTO's required application formats/forms, with:  a) fees for at least one class, b) a drawing of the mark, and, c) a listing of the goods and/or services.  If the application does not meet the minimal requirements for a filing date, the original application record will be retained in the system until the applicant fulfills the minimum requirements or until a designated time limit expires.

For applications meeting the minimum statutory requirements, the computer will build a new application record, presumptively classify the goods or services in the record, and generate the "expert systems" review (automatic computer review) of information contained in the record.  This review will flag any inconsistencies in the record that require correction and perform searches in various electronic databases for information that may affect registrability of the mark.  The results of the research and informalities review will be attached electronically to the application for review by an examiner.

If the computer is not able to make an initial classification of the goods and services, the application will be flagged by the system for on-line review of the goods and/or services in the record by an employee who will determine the international class or classes.  Employees in the Intake Section will also handle any other problems that cause the computer to flag an application as needing "exception processing" during the initial review.  Intake employees will assign design search descriptions to marks containing figurative elements.  Design search codes will be based on descriptive words that identify the significant features of the mark.  For all marks containing figurative elements, the applicant will be asked to provide a description of the mark in the application.

Assign New Application:

The electronic system will manage all applications in the system and will route new applications to appropriate locations based on the "status" of the application.  The electronic system will match a new trademark application's "market sector" (i.e., a market sector is the general marketing channel in which the goods and services move) with the examination team designated to handle such applications.  Applications will be assigned for examination based on a "demand-pull" concept (i.e., cases will not be placed in a particular team's queue until a request for a new file is made).  However, conflicting, co-pending, and amended cases will be immediately assigned to the examination team member who originally examined the case, with suspense dates or deadlines indicated in the record.  The goal for performing all of the pre-examination activities on a new application is two (2) days.  After that time, the record would be available for examination.

Examination:

Law offices or examination offices will consist of groups of comprehensively trained, cross-functional examination teams with broad responsibilities for examination and processing of applications.  Each team will consist of an optimum mix of attorney advisors (Trademarks) and legal assistants.  The offices and teams will be organized by market sector with each market sector containing the classes of goods and services that have commonalties in terms of the way or manner in which they are marketed and/or the marketing channels in which they commonly move.

One or more examination teams will be organized in each examination office and trained with a focus on providing high quality customer service, high quality examination, and a first action within one month of the filing date of the application.  There will be a focus on processing new applications from receipt to completion of the first action without creating processing queues or backlogs.

A member of the examination team who is trained and has authority to handle most of the front-end processing of an application will initially retrieve a new case.  The expert systems' formalities review, search results, search strategy, and research results will be electronically linked to the application and accessible to the examination team member.  The examination team member will correct any information in the record not requiring applicant approval (e.g., obvious spelling errors, notes to file), and identify and propose corrections for those items requiring notification to the applicant.  Attorney advisors on the team may forward cases that do not require substantive refusals to legal assistants.  Response forms tailored to the specific nature of the office action will be included with all office actions sent to an applicant.  If the applicant approves a change or examiner amendment that is indicated on the response form, and if the interaction between the applicant and the office is over a network, the system will immediately update the electronic record to reflect the change.

An attorney advisor on the team will examine the search strategy, determine which parts of the search results to review, and conduct any additional searches that are necessary.  Searches of commercial databases (e.g., Lexis/Nexis, etc.), a search of a goods and services database, any additional 2(d) searches, and/or searches of evidentiary research existing in electronic form (e.g., TTAB decisions, CFR, USPQ) will be performed as required.

In the future, a substantial amount of evidence used to support statutory refusals of registration will be accessed using on-line, electronic databases or on CD-ROMs.  These research resources will be continually expanded to include new technical and legal documents as they become available.  USPTO staff will be able to request access to new materials as they are identified and will have access to both no cost and commercial on-line databases.  When needed evidence is identified by an examination team member (in the electronic system), it will be "tagged" if it is in an internal data base, or copied and pasted into the application record if it is a commercial data base, to enable the system to attach it to the office action at the time of mailing or transmission to the applicant.

The system will send an update or reminder to team members regarding the due dates of cases in the team's docket.  The message will flash on the screen and will not disappear until it is acknowledged.  New applications will be sent to the team on a demand basis.  The system will give team examiners the option to set up a calendar or personal docket to list various types of cases in their caseload.  This calendar feature will include status information for the record and date range, the ability to determine how many cases have been assigned and are awaiting action, and how many of all the types of cases are due on a particular day.  Additionally, the system will allow any team member to set his or her own parameters and create a specialized list. 

Attorney advisors on the teams will examine each case to make an initial determination regarding needed statutory refusals of registration and prepare and "sign" the office action.

When a first action refusal is forwarded to the applicant, the current information in the database that will be contained in the publication for opposition and registration certificate will be attached to the action as an appendix.  Under current law, the applicant will have six months to respond to the action.  The above activities, from assignment of a new application to a particular team to assignment of a publication for opposition date or forwarding of a first action refusal, are targeted to be performed within one month after the filing date.

Signatures will not be required on outgoing, electronic office actions but the action will contain the examiner's name and an indication that the action was "authorized" by the person named.  When a decision is made to issue an office action, the examination team member will press a key and enter a password or PIN number to signal formal approval and mailing of the action. 

Any responses or changes received from the applicant will be reviewed and processed by the examination team.  If the applicant approves changes to a "typewritten" drawing, the examination team will have the ability to make the appropriate changes to the drawing in the system.  The original mark will also be maintained in the system.  If a new drawing for a mark that contains figurative elements is received from the applicant, it will be attached to the application record and flagged by the examination team as the appropriate drawing for use in the OG.  All exchanges with the customer will be completed, if possible, via computer rather than telephone, fax, or mail.

Publish Marks for Opposition:

When an application is approved for publication for opposition, the member of the examining team who is "responsible" for the application will make a final review of the record and approve it for publication.  The computer will then perform a final review of the application to ensure that all information needed for publication is present.  This includes spell checking, final edits and validations, verification of fee payments, and so forth.  After the application passes this final review and is "accepted" for publication, the computer will assign a publication date and generate a Notice of Publication that will contain:  a) the publication date, b) all publication and registration information as it will be shown in the OG and on the certificate of registration, and, c) any changes made to information during examination.

If fee payments cannot be verified for an application ready for publication, the application will be "held" until verification is received by the system.  At this point the computer will proceed to process the application for publication for opposition by assigning it to the next available OG issue.

When an application is accepted for publication, the computer will format the application data for publication in the Official Gazette.  The formatted OG pages, with images incorporated, will then be electronically transmitted for printing.  Information in the OG will also be available in an electronic format.  Hard copy and electronic versions of the OG will be released on the same day and be identical in content.

Color drawings will be published in the OG in a section for color marks.  To facilitate dissemination of trademark products, the OG, as well as other printed trademark products, will be made available in electronic format to customers

Register the mark:

If a use-based application is published in the OG and no opposition is filed within the thirty-day opposition period, the system will automatically assign a registration date and registration number to the application ten working days after the opposition period expires.  The following week, the registration information will be published in the OG, and a registration certificate will be printed and forwarded to the new registrant.

Trademark Trial and Appeal Board (TTAB) actions and petitions will be filed using standard forms.  Actions at the TTAB may be filed electronically or on paper.

Print Trademark Registration Certificate:

Registration certificates will be formatted and printed on-site.  The system will be able to print both black and white and color marks.  After an application has been "approved" for registration, the registration certificate will be formatted, printed, and mailed within seven calendar days.  All applicants will receive an "official" paper certificate when their mark registers but will also be able to download an electronic copy of the certificate.

Issue Notice of Allowance:

After an ITU application is published in the OG and the opposition period ends without an opposition filed against the mark, the computer will automatically generate a NOA ten working days after the opposition period expires.  The applicant will have six months from the date of the NOA to file an Allegation of Use to register the mark or request an extension of time.  The applicant may request that the NOA be forwarded electronically or by regular mail.  For those applicants not making an election at the time the application was filed, the NOA will be forwarded using the same method used when the application was filed.

If a NOA is issued incorrectly (e.g., two bases, delete l(b), error discovered, wrong data used), the case will be flagged as a "priority" case and forwarded for correction to the examination team member who approved the case for publication.  An office action, if necessary, or a notification of the correction will be sent to the applicant.

Examine "Allegation of Use" or Extension of Time:

If the applicant files an Allegation of Use within the designated time period, the computer will perform edits and validations on the data and assign the file to the examination team member who initially examined the application.  If approved by the attorney, the system will assign the case a registration date and generate the registration certificate within ten workdays.  The USPTO will forward the certificate of registration to the applicant concurrently with publication of the record in the OG as a registered intent-to-use mark.  If informalities or other problems exist with the Allegation of Use, the examination team will prepare an office action, and processing will continue similarly to that for a new trademark application.

If a request for an extension of time is filed and it is the first extension filed, the computer will perform edits and validations on the data and review the file for requirements, including a statement of a continued bona fide intent-to-use the mark in commerce and payment of the appropriate fees.  If all requirements are met, the computer will automatically generate a notice of acceptance of the extension request.  At this point the applicant has an additional six months to file an Allegation of Use or a second request for an extension of time.  If a second request is filed, the request will undergo a computer check for appropriate information but the request will be forwarded to the team member handling the application to allow them to review the "just cause" statement to justify the additional extension that is required in second and subsequent requests.  Based on the examiner's decision, the computer will generate a notice of acceptance or the examiner will generate a notice denying the request.

If the Allegation of Use is filed before the case is published for opposition, it will be matched with the application and the application will be reviewed as if it had been filed as a use-based application.  If an Allegation of Use is filed after the case is approved for publication, it will be matched with application record and set for review after the opposition period is completed.  If an Allegation of Use or extension of time is not filed within the six-month time period, the computer will automatically generate a "notice" to the applicant two weeks after the response period has ended indicating that the application is considered to be "abandoned."

Amendments:

Amendments to information in applications will be forwarded to the examiner and team who originally examined the case.  The amendment will either be accepted or rejected.  An applicant wishing to change the goods and services for an application will be required to submit a "complete" new goods and services statement.  The computer will highlight the differences between the original and new versions within each class.

If the examination team member recommends an amendment to the application to correct an informality, the amendment will be written in a standard format and forwarded to the applicant.  The applicant may accept the suggested language as it exists by checking the appropriate box or provide an alternative amendment.  If the applicant accepts the amendment as it exists, the computer will make the appropriate changes and designate the case as ready for publication, if there are no other outstanding issues.  If the applicant suggests an alternate amendment, the case will be forwarded to the examination team member who originally examined the case.

Abandonment:

The computer will automatically generate notices of abandonment.  Express abandonments received from the applicant will be entered into the system and attached to the appropriate file.  The system will automatically abandon cases for which no request for extension of time or Allegation Of Use is filed and cases for which no response to an office action is received within six months.  The system will notify the assigned examination team of abandonments that affect other cases.  The system will also notify the examiner when a suspended case is related to an abandonment.

Quality Review:

No officially organized quality organization will exist.  Quality will be based on the ownership of a case or action by the work team (the attorney advisors and legal assistants) and the "owners" of the case will be held responsible for the quality of the end product.  System checks designed for quality and team performance will ensure the high quality of Trademark products.  Quality measures will be assessed based on customer feedback to the Customer Service Center and through tracking of petition and opposition results.

Provide Customer Support:

Applicants will be able to determine the status of any filing through an electronic bulletin board or automated telephone service.  Because all applications will be available over internal networks, Trademark staff will have access to application data and will be able to provide applicants with requested information ranging from the status of the application to copies of notices that have been generated regarding the application.  A staff member receiving such a request will be able to retrieve the file (as read-only) and forward selected notices to the applicant electronically or on paper.  The applicant will still be required to submit a "formal" request for a change of correspondence address.  However, if the applicant has a PIN number he will be allowed to change his address electronically without filing a request to have the USPTO effect the change.

Applicants and other parties will be able to file electronic orders and purchase copies of materials related to applications and registrations not automatically disseminated during normal processing.  This will reduce the processing cost incurred by the USPTO and encourage electronic information dissemination.  Fax-on-demand will be offered for a fee to applicants who request information through fax transmission.

Customer support will include a wide variety of services and capabilities, focused on meeting customer desires and determining future needs.  These will include:

·       A Help Desk staffed by personnel able to meet Trademark internal and external customer requirements.

·       An "Attorney of the Day" program to assist customers in solving Trademark issues other than case-specific issues.

·       An electronic bulletin board accessible through commercially available networks that will provide a full range of on-line capabilities.  These may be offered on a fee for service basis.

·       A Customer Service Center that will consist of a Help Desk and a retail operation for the direct sale of trademark material to the public.

·       The availability of trademark informational materials to meet customer needs and future requirements (i.e., pamphlets, brochures, diskettes, CD-ROMs).

·       An automated telephone help line to obtain information or status on trademark filings or other activities and programs.

·       The capability to provide seminar, symposium, and exposition programs to promote the Trademark mission.

·       Public relations-related events and information.

Review Registrability:

Petitions to the Commissioner and all Trademark Trial and Appeal Board (TTAB) matters (ex parte appeals, oppositions, requests for extensions of time to oppose, cancellations, interferences, and concurrent use filings) will be scanned and OCR processed.  Large, voluminous evidentiary materials may not be scanned, but may be forwarded to the appropriate law office or TTAB docket area for temporary storage during any proceedings.  Law office and TTAB personnel will determine which materials are to be scanned and electronically tagged to the case.

Requests to Reinstate and Petitions to Revive (abandoned for failure to respond) will be processed by the examination teams.

Letters of Protest will also be routed to the teams, but only managers, supervisors, or subject matter experts will complete these actions.  All other types of petitions will continue to be routed to the staff of the Assistant Commissioner.

Management:

Managers in the USPTO will have on-line access to all management information related to applications and processes.  Day-to-day workload and work team capabilities can be viewed, and parameters changed to distribute any application backlogs.  Planning will be enhanced through the use of easily understood statistical tools and will focus on long-range requirements and budget issues.

Summary of Impact on Applicants:

Applicants having the capability will be asked to do all or most of their business with the USPTO's Trademark Operation using electronic data interchanges.  This will range from filing new applications using electronic formats that follow standards established by the USPTO, to corresponding with the attorney advisor handling the case using e-mail, to filing all supplemental materials electronically.  For applicants using paper, there will be a requirement that they use standard formats for filing applications and other materials that enhance the USPTO's ability to capture pertinent information for use in the USPTO's automated systems.  In exchange applicants will receive substantially improved customer service and quality.  For instance, filings will not be lost, applications will always be available for review, copying, and certification, and the entire process will work more quickly.  Finally, the USPTO should be able to handle the rapidly increasing number of trademark applications with minimal increases in cost to future applicants and registrants.

[1] See attachment: Trademark Process Reengineering, 1993

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