TPAC (Trademark Public Advisory Committee) Meeting - May 7, 2010

USPTO Headquarters
Paris Conference Room
Madison East 2nd Floor
600 Dulany Street
Alexandria, VA 22314


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Meeting Agenda - Public Session 9:00 a.m. - 12:50 p.m. (EST)

Please note that TPAC has asked that all presentations be submitted in writing at least two weeks prior to this meeting. 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 - 9:05Introduction and comments by TPAC Chair.
9:05 - 9:20Welcome and brief comments by USPTO Leadership.
9:20 - 9:35

2007-2012 USPTO Five-Year Strategic Plan, focusing on issues of importance to trademarks.

  1. Presentation from USPTO Leadership - either an update on where the plan update stands or, if the updated plan has been released to the public, a presentation on the updated plan itself.
  2. Discussion with TPAC regarding trademark elements of the plan and any possible changes thereto TPAC may suggest.
9:35 - 11:05

Discussion with Trademarks Commissioner Lynne Beresford about:

  1. Discussion of TPAC concerns about trademark filings being made by online non-attorney services and/or non-attorneys working for online services.
    • To what extent are these entities engaging in the unauthorized practice of law? To the extent they are, what action is the USPTO taking and/or going to take to stop it?
    • Are the actions of these entities causing any problems for the USPTO and/or the customers of these services?
      • If so, what kinds of problems are being caused?
      • Are the non-attorney services mining the USPTO database for email addresses of filing correspondents and using them in sales efforts? Can this be prevented?
      • If so, what is the USPTO doing and/or going to do regarding these problems?
  2. 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.
  3. Communicating with trademark examining attorneys.
    • Discussion of TPAC experience in reaching examining attorneys by telephone.
    • TPAC discussion - under what circumstances does the trademark community prefer having issues initially raised by trademark examining attorneys on the phone as opposed to by written office action?
    • 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?
  4. 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?
  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.
    • TPAC discussion of what approach should be taken for these studies and how should the studies be conducted.
  6. 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.
    • Instances of improper use of a mark in the goods/services identification - what, if anything, should be done?
  7. Discussion of status of this TPAC goal -- get the Official Gazette published in HTML rather than in PDF and, perhaps as an interim step, eliminate the large-PDF-file problem.
  8. Discussion or progress toward the TPAC goal of having electronic certificates of registration with an option to obtain a paper certificate.
  9. 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.
  10. Brief report on current Trademark Operation speed and quality performance metrics.
    • Is there a backlog on processing statements of use?
11:05 - 11:10>>Break<<
11:10 - 11:30

Discussion with TTAB Judge Gerard Rogers regarding TTAB matters.

  1. Brief report on current TTAB speed statistics and case volume statistics.
  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.
    • Discussion of obtaining non-TTAB-judge resources to help with future revisions of the TBMP.
  3. Report on recent developments with ACR, if any.
    • When will "plug-and-play" procedural options be made available to potential users of ACR?
  4. Update on recent TTAB actions regarding cases that have lingered on the docket for a very long time.
  5. 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.
11:30 - 11:45

Report on Financial Status of the USPTO.

  1. 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 beyond.
  2. Discussion of the financial status of the Trademark Operation with Trademarks Commissioner 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.
  3. Discussion with a USPTO designee about if, when and to what extent trademark funds are anticipated to be tapped to cover a shortfall in the Patent Operation: (1) under the present economic forecast; and (2) in the reasonably possible worst-case economic forecast.
11:45 - 11:55

Discussion with the Office of the Chief Financial Officer.

  1. Brief presentation with latest results of the trademark fee study (including a written report provided two weeks in advance of the meeting).
11:55 - 12:05

Discussion with the Office of the Chief Information Officer.

  1. Discussion with 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?
12:05 - 12:10Public comments on any other issues (if any). We'll extend this time if there are a lot of comments or questions.
12:10 - 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 than, 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.