TPAC Meeting - September 2, 2010

USPTO Headquarters
Madison South Auditorium
600 Dulany Street
Alexandria, VA 22314


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Meeting Agenda - Public Session 9:00 a.m. - 12:15 p.m. (EST)

Thus, each item below is intended to be for discussion, asking questions and public comments rather than for presentation of information that can be submitted in writing in advance. Opening comments by the featured speaker(s) should not exceed one-fifth of the allotted time.

9:00 - 9:15

Introduction and comments by TPAC Chair, including:

  1. Recent changes and reductions in how TPAC does its work.
  2. Recommendations for TPAC structural reform.
9:15 - 10:45

Discussion with Commissioner for Trademarks, Lynne Beresford:

  1. Update and discussion of 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.
  2. Update in any possibly upcoming changes to trademark fees, such as for paper or electronic filings.
  3. Update and discussion of TPAC concerns about trademark filings being made by online non-attorney services and/or non-attorneys working for online services.
  4. Communicating with trademark examining attorneys.
    • Should trademark examining attorneys be required to put their email addresses on office actions?
    • Should phone numbers of examining attorneys be stated in the TARR database?
  5. Congressionally-mandated Study Issues. The recently enacted Trademark Technical and Conforming Amendment Act of 2010 (Technical Amendment Act) contains this study mandate:

    (a) In General- Not later than 1 year after the date of enactment of this Act, the Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, shall study and report to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives on--

    (1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and

    (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.

    (b) Recommendations- The study and report required under paragraph (1) shall also include any policy recommendations the Secretary of Commerce and the Intellectual Property Enforcement Coordinator deem appropriate.

    • Discussion of the status of this issues.
  6. Update and discussion - If a statement of use ("SOU") is denied approval in an intent-to-use application, should the application become eligible for extensions just as if no improper SOU had been filed?
  7. Quality Issues.
    • Discussion regarding the excellent first office action initiative and any other programs that target substantive quality of office actions.
    • The Trademark Operation's plans to expand its consistency initiative.
  8. Discussion of status of this TPAC goal - get the Official Gazette published in HTML rather than in PDF and, perhaps as an interim step, further reduction of the large-PDF-file problem.
  9. Discussion of progress toward the TPAC goal of having electronic certificates of registration with an option to obtain a paper certificate.
  10. TMEP Issues.
    • Discussion of progress toward the TPAC goal of having the TMEP be continuously up to date.
    • Progress on creating a parallel "wiki" TMEP.
  11. Report on current Trademark Operation speed and quality performance metrics.
  12. Screening of on-line video
 <<5 minute Break>>
10:45 - 11:15

Discussion with the Office of the Chief Information Officer.

  1. Discussion of status of, and plans for, new computer system for the Trademark Operation - Trademark Next Generation ("TNG").
  2. Brief discussion of status of ongoing technological remediation. What effect does this have on the Trademark Operation in light of TNG?
11:15 - 11:30

Report on Financial Status of the USPTO.

  1. Report from a USPTO representative on recent Congressional action concerning USPTO funding.
  2. Discussion on the financial status of the Patent Operation with a USPTO designee, including the Patent Operation's current financial forecast for fiscal year 2010 and for the fiscal years beyond.
  3. Discussion of the financial status of the Trademark Operation with the Commissioner for Trademarks, Lynne Beresford and/or her designee, including the Trademark Operation's financial forecast for fiscal year 2010 and the financial forecast for the fiscal years beyond.
 <<5 minute break>>
11:30 - 11:50

Discussion with TTAB Representative regarding TTAB matters.

  1. Status report on coming appointment of new TTAB chief judge and on filling of TTAB judgeship vacancies.
  2. TBMP issues:
    • Status report on getting TBMP up to date in HTML and keeping it easily searchable and in HTML.
    • Report on plans for frequency of TBMP updates after this revision.
    • Status report on obtaining non-TTAB-judge resources to help with future revisions of the TBMP.
  3. Report on current TTAB speed statistics and case volume statistics.
  4. Update on any recent TTAB actions regarding cases that have lingered on the docket for a very long time.
  5. Report on recent developments with ACR, including development of "plug-and-play" procedural options.
  6. Status report on preparing a request for comments on:
    • A possible, alternative fast-track for TTAB opposition and cancellation cases.
    • Making the TTAB more assertive in encouraging settlement.
    • Possible limits on consented extensions.
11:50 - 11:55Public comments on any other issues (if any). We'll extend this time if there are a lot of comments or questions.
11:55 - 12:15Adjourn public meeting.

After this public meeting, TPAC anticipates having a post-lunch TPAC-only executive session in the afternoon to discuss any personnel, privileged and/or confidential matters. After that, TPAC anticipates have a working-session public meeting to work on issues such as scheduling of upcoming telephonic and in-person meetings, identification of to-do items for TPAC members and identification of issues to address in the future.