Remarks Prepared for Kathi Vidal
Under Secretary of Commerce for Intellectual Property and
Director of the USPTO
International Trademark Association Annual Convention
May 3, 2022
Washington Convention Center, Washington, D.C.
Thank you, Jenny, for the wonderful introduction. Thank you also for all the great work you did when you were at the USPTO. I’m looking forward to collaborating with you.
I’m very happy to be here with so many dedicated professionals from the international trademark community. And to see so many of you in person. Your brands are driving the global economy. Your work is essential in keeping hundreds of millions of people throughout the world employed in great jobs, and in great companies.
For all of you who are engaged in the daily workings of INTA, thank you. Thank you for your work in keeping the entire global trademark community informed and educated about the latest developments in this thriving and evolving industry.
There is no other IP organization in the world like INTA. None. To bring together this many incredible people from all around the world, year after year, and to have such a tight-knit global trademark community is amazing. You can just feel the energy.
I am also grateful for INTA’s participation in the new TTAB Pro Bono Clearinghouse Program. Thank you for your efforts to recruit attorneys and practitioners. And, for those of you who have volunteered to work with under-resourced trademark applicants who cannot afford representation, thank you. Ensuring that everyone has equal access to our innovation and entrepreneurism ecosystem is critically important for jobs, economic growth, and for the lives of all. And, with the rise in opportunistic counterfeit behavior, protecting brands is more important than ever.
I sat in your shoes fighting this issue as a private practitioner. It was frustrating. There is no fair access to the innovation ecosystem when someone can compete with you illegally using your own brand — especially when they can do so more cheaply and with inferior products. We are working to put a real dent in this — with the register protection work we are doing, and with the sanctions we have started issuing. You need to be able to get your trademark registered, and it must be protected. We will not stop until that is a reality for everyone.
I am also extremely pleased to lead the U.S. Patent and Trademark Office. You know our people. You’ve seen them on the stage, and engaged with them in bilateral discussions. They take great pride in serving you. They are fantastic. But I don’t have to tell you that.
The 13,500 of us at the USPTO are working together to strengthen IP rights and generate prosperity for all Americans, and those who bring their brands to the U.S. market. We know you all want to do the same in your countries. We are an administration that believes in strong intellectual property protection, and knows that strong IP plays a key role in bringing ideas to impact.
As you know, we have a big list of things we want to do at the USPTO. The things we are going to do at the USPTO; we are going to bring more ideas to impact, and we are going to do that inclusively. I look forward to hearing from you, and working with you, on making progress on the tough issues you are discussing this week.
Trademark Office Update
Having served at the USPTO for three weeks as of today, I could not be more impressed with the talent, the exceptionalism, the passion, and dedication of everyone at the PTO. Commissioner Dave Gooder and our team of 1,084 at the Trademark Office have worked tirelessly over the past year. As many of you know, trademark filings surged in 2021 to a record-setting 944,000 classes. This was 27.5% higher than in 2020. So far this year, filings are down 13% compared to the same period in 2021. However, compared to 2020, a far more normal year, our filings are actually up 11%. This is consistent with the growth we have seen for well over a decade.
We all have to thank the USPTO’s 735 trademark examining attorneys who have worked harder than ever during the pandemic. Thank you. And they couldn’t do it without the consistent and professional effort of the staff, petitions and policy attorneys, and the many administration teams. This enormous growth in filings has created a current backlog of 544,000 unexamined classes. First-action pendency is currently about 7.8 months. And disposal pendency is 12.8 months.
You’ll be please to know that we just hired 32 additional examiners in March. They are the second class of examiners training in our new Trademark Academy. And we are hiring staff to support them in the processing and review of filings. We are also deploying new technologies to bring both inventory and pendency down. We are making progress.
And what impresses me most is that we are still exceeding our examination quality metrics, including our customer experience numbers which are high. So, for those of you who have pending applications, bear with us.
We have also been hard at work implementing the Trademark Modernization Act, the biggest change to U.S. trademark law since joining the Madrid Protocol in 1996. For those of you who provided input into rulemakings, thank you. We continue to refine our systems, our personnel, and our policies.
We have a team in place of six senior-level Policy and Petitions Attorneys examining petitions for expungement and reexamination. They are supported by policy supervisors, TTAB judges, and attorneys from the USPTO’s Solicitor’s Office. This working group meets twice per week to discuss petitions, draft decisions, and to identify best practices.
As of April 29, we have received 78 petitions. Letters regarding institution and non-institution began issuing on February 11th. The first Director-instituted Office Action was issued on March 14th, and the second was on April 6th. We have created a web page that lists all of the petitions that have been filed. There are additional efforts to create over the next six months a public database of sanctions orders, petition decisions, and TMA decisions. The TMA web pages have been updated to include best practices for practitioners to prepare petitions for reexamination and expungement. And Deputy Trademark Commissioner Amy Cotton, who addressed the INTA conference earlier today, has been meeting with stakeholders in the trademark community to discuss lessons learned, and how we can adopt your ideas into our systems.
Boosting the protection of our register — and addressing sophisticated and evolving criminal schemes — remains a top priority. We are continually expanding the resources we are deploying. For example, our Special Task Force for Inappropriate Activities continues to develop policies, procedures, and technologies to identify and mitigate scams and unauthorized submissions.
What’s more, we have added additional attorneys, investigators, and other staff to address these issues. On the technological side, our IT staff has implemented an automated validation process to identify unacceptable domicile addresses. The bot verifies incoming addresses in trademark submissions against the Postal Service’s Coding Accuracy Support System. The new system automatically notifies the examining attorney to issue a refusal when the address is deemed to be improper. It is helping identify applicants attempting to circumvent our requirement for foreign applicants to have a U.S.-based attorney or registered agent representing them.
We have developed an administrative process for finding and sanctioning bad actors who are submitting improper or illegal filings. In fact, recently, we sanctioned a network of companies operating out of Pakistan. The Abtach affiliates were violating our rules in many ways —sending fake e-mails, and disguising themselves as trademark examiners. Their messages used the names of actual examining attorneys at the USPTO.
Not only that, but we have learned that even after they were sanctioned the Abtach affiliates were telling their victims that their applications would not move ahead until they sent them even more money. Including Abtach, over the past six months the Office has issued two significant orders for sanctions involving nearly 20,000 applications. Because the scams are impacting so many applicants, we have increased our communications not only on our website, but via social media — as we help innocent victims restart the application process so they can obtain valid trademark registrations.
One of the most important ways to protect our register is to restrict access to our systems to only those who have a valid reason to access trademark records, and whose identity can be verified. Since January, more than 45,000 applicants and trademark professionals have verified their IDs, and on March 25th, we extended the voluntary verification period further. We are in the process of making changes to our verification process . . . so, stay tuned. We pride ourselves on transparency, and will keep you up to date on all of our activities associated with the registry.
There is a great deal more I can discuss with you about our current activities. There is so much happening in the trademark community in the United States, and throughout the world, as you know by attending this conference. But I will end by briefly describing two important initiatives.
The first is the USPTO’s program aimed at stemming the tide of illegal counterfeits. Our partnership with the National Crime Prevention Council has entered a new phase. We just finished filming a “Go for Real” anti-counterfeiting Television PSA with Academy Award Nominated director Trevor White. The ads are intended for young buyers of branded products, with the theme: “You’re Smart. Buy Smart. Don’t fall for fake products. Buy the brand, and keep it real.” The campaign continues to reach audiences through social media, online advertising, interactive web content, radio ads, handouts, posters, and other print material.
And, last but not least, is our most important initiative to broaden involvement and diversity in the innovation economy. We are investing in big programs to attract and inspire our youth, and to engage more women and those from disadvantaged communities from throughout the country. The USPTO has created the Council for Inclusive Innovation — CI-Squared — Chaired by Commerce Secretary Gina Raimondo, and which I Vice-Chair. CI-Squared is bringing together some of the best minds in the country to develop a National Innovation Strategy.
And we remain fully committed to all of the educational activities run by our outreach teams, and that we do in conjunction with the National Inventors Hall of Fame, such as the extremely successful and popular Camp Invention for young students. And in this vein, I want to thank you personally for INTA’s sponsorship of the Saul Lefkowitz Moot Court Competition. The regional competition that involved 70 teams — and the national finals in March — are a clear indication of your commitment to broadening engagement in IP. Congratulations to the team from the University of California Hastings College of Law for taking the top prize. And a big thank you to the TTAB judges and attorneys who listened to the six regional winners and runners-up argue their case in the national final.
Along with INTA’s embrace of diversity, equity, and inclusion through its Foundation, we pledge to work with all of you to spur a new generation of innovators and entrepreneurs. All of us in this room know that innovation is the only ticket to prosperity, and for creating a future that is sustainable, equitable, and hopeful for billions of people. I ask that you do everything you can as an organization and as individuals to inspire the next generation of innovators and entrepreneurs. Thank you. And I look forward to working with you over the coming months and years.