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Update: Improving the Accuracy of the Trademark Register
Guest Blog by Chief Administrative Trademark Judge Gerard F. Rogers
The public counts on the accuracy and integrity of the U.S. Trademark Register when selecting and clearing new marks, so as to avoid conflicts with already registered marks. Registered trademarks that are not actually in use in commerce unnecessarily block someone else from the Register. Based on analysis of the results of the Post Registration Proof of Use Pilot, Trademarks found that more than half of registrations being maintained include at least some goods or services for which the registered mark is not actually being used. In the wake of these findings, the USPTO has been exploring ways to improve the state of the Trademark Register. Some changes have already been made, as Commissioner for Trademarks Mary Boney Denison described in her blog post last year. The Trademark Trial and Appeal Board (TTAB) is considering revision of its rules to allow a party to seek cancellation of registrations for marks no longer in use or that never were in use, through streamlined proceedings.
These new streamlined cancellation proceedings would facilitate challenges to registrations for unused marks by those who believe that the mark’s continuing presence on the Register will damage them in some way, often because it is blocking the challenger’s attempt to register the same or a similar mark. A party seeking to “clear” a mark for use and registration who encounters a registered mark that presents a potential likelihood of confusion may investigate and find that the registered mark seems not to be in use in commerce. Instead of commencing a full cancellation proceeding, the party could initiate a streamlined proceeding and, by providing evidence of nonuse, quickly and efficiently clear the blocking mark from the Trademark Register. Unlike a full proceeding in which a challenger must bring all available claims or run the risk of being barred from raising them in the future, the challenger may focus solely on claims of nonuse or abandonment, without endangering its option to bring other claims in the future.
Chief Administrative Trademark Judge Gerard F. Rogers
Specifically, the grounds a party could assert would be limited to: (1) abandonment of one or more goods/services (nonuse plus intention not to resume use); or (2) no use for one or more of the goods/services prior to the relevant date of an allegation of use Counterclaims by the registrant would not be permitted. Procedures that would facilitate speed and efficiency of these proceedings could include: requiring the challenger to submit evidence sufficient to support its grounds at the time of filing the petition, and the registrant to submit proof of use of the mark with its answer; limiting discovery to the challenger’s standing if it would prove dispositive; and an abbreviated schedule with no oral hearing. The TTAB would commit to determination of the cases within an expedited timeframe, potentially 70 days from commencement (in cases of default by the registrant) to approximately 170 days from commencement for cases decided on the merits. The cases also could be less expensive, with lower fees and legal costs, due to the relative simplicity of the proceedings.
To obtain preliminary feedback on whether streamlined proceedings would be useful and how they should be structured, on May 16, 2017, the USPTO published a request for comments in the Federal Register (82 Fed. Reg. 22517). A variety of stakeholders and customers responded with comments. The USPTO received valuable feedback on the potential effectiveness of the proceedings overall, as well as on specific issues such as safeguards against potential abuse, timing and deadlines, the appropriate fee amount, procedural points, standing, the burdens of production and proof, the use requirement, and the preclusive effect of Streamlined Proceedings.
After the comment period closed, stakeholders gathered for a public meeting on September 25, 2017, where the USPTO reported on the comments and attendees engaged in a lively discussion about various aspects of the Streamlined Proceedings. The conversation addressed some discussion questions posted on the USPTO website.
As indicated at the public meeting, the USPTO continues to welcome additional input on the discussion questions and other issues related to streamlined proceedings. Written comments may be submitted via TTABFRNotices@uspto.gov. The success of this type of initiative depends heavily on members of the public, sharing their insights and experience. These contributions allow the USPTO to better understand the participants’ perspectives in weighing the costs and benefits of Streamlined Proceedings. Should the USPTO move forward with Streamlined Proceedings, the next step would be issuance of a notice of proposed rulemaking to set out the specific rule changes needed to implement streamlined proceedings. The USPTO looks forward to continued engagement on this important initiative.
Federal Agencies Tackling Trademark Scams
Guest Blog by Commissioner for Trademarks Mary Boney Denison
Some trademark applicants and registrants have paid fees to private companies while mistakenly thinking they were paying fees required by the USPTO. To combat this problem, last week, the USPTO co-hosted its first ever public roundtable on fraudulent solicitations with the Trademark Public Advisory Committee. The objectives of the event were to educate the public about the problem of misleading or fraudulent advertisements for trademark services, to learn more about what other government agencies were doing, and to brainstorm new ideas for tackling this complex issue.
Joe Matal, who is performing the duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, spoke at this roundtable, as well as 11 public speakers and 7 federal speakers from the USPTO, U.S. Department of Justice (DOJ), U.S. Postal Inspection Service (USPIS), Federal Trade Commission (FTC), Small Business Administration (SBA) and U.S. Customs and Border Protection (CBP). Matal urged all of the participants to “work together to corral and fix this problem.”
Mary Denison and Joe Matal at the Public Roundtable on Fraudulent Trademark Solicitations
The USPTO has worked closely in the past with other federal agencies on criminal prosecutions for fraudulent trademark solicitations. During the roundtable, representatives from DOJ and USPIS spoke about the recent criminal convictions in California of five individuals, including employees of a bank, who ran a lucrative trademark scam and knowingly laundered the proceeds. Two have been sentenced and the remaining three are scheduled for sentencing in August. To learn more about this case and the USPTO’s role in it, read my blog from December 2016.
Trademark scams range from offers to file renewal and maintenance documents, to offers to record marks with U.S. Customs and Border Protection, to monitoring services, to recordation in useless databases. Some of the scammers take consumers’ money and deliver nothing. For instance, during the roundtable, the American Intellectual Property Law Association cited an example of a restaurant that mistakenly paid a scammer to file maintenance documents for a registration. The restaurant relied on the assumption that the filing would be made. Only when the restaurant sought legal counsel about enforcement against an infringer did it learn that the scammer filed nothing and the registration had been cancelled. Others scammers actually perform work but at exorbitant prices. One speaker at the roundtable had filed three civil law suits against different scammers.
At the USPTO, we offer warnings in trademark application filing receipts, in emails transmitting office actions, and with registration certificates. On the informational page of the USPTO website on trademark solicitations, customers can watch a brief video on how to identify misleading notices, and see a list of fraudulent entities we’ve already identified. For further information, customers can consult our Basic Facts Booklet on protecting trademarks, or contact us directly at TMFeedback@uspto.gov. While the USPTO lacks the power to file lawsuits against the scammers, we have issued cease and desist letters against them and pursued others for unauthorized practice of law.
Anyone who receives a fraudulent trademark solicitation should file a complaint online with the Federal Trade Commission or call 1-877-FTC-HELP. This is key in order to help the government tackle the ongoing solicitation problem, and USPIS and DOJ use the FTC complaint reports to decide which companies to pursue criminally. When filing a complaint, customers should include the solicitation and the envelope with the postmark, as well as a copy of the front and back of any cancelled check paid to a scammer when applicable. Scammers should be reported to the FTC as soon as possible because they frequently change mail drop addresses and other traceable information (often monthly), and delay can hinder or preclude criminal investigations. Note that lawyers can also report solicitations for their clients. The FTC has additional information on scammers and government imposters on its website.
The USPTO continues to work hard to fight solicitations from companies fraudulently promising to protect trademarks. We plan to issue a report on our findings from the roundtable and will continue to collaborate with other federal agencies to educate the public on this issue and identify those responsible.
Posted at 05:02PM Aug 02, 2017 in trademarks |
Update on Global Trademark Harmonization
Guest blog by Commissioner for Trademarks Mary Denison
In late May, I attended the TM5 mid-term meeting in Barcelona hosted by the European Union Intellectual Property Office (EUIPO). The TM5 is a strategic cooperation group of the five largest trademark offices in the world including the USPTO, EUIPO, China (SAIC), Japan (JPO), and Korea (KIPO). I gave a blog update last year on the TM5 meeting we hosted at the USPTO, and I’m happy to report we have continued making headway this year towards global trademark harmonization.
The TM5 seeks to facilitate and harmonize trademark filings within its members, as well as other trademark offices around the world. The work of the TM5 is structured through cooperative projects designed to improve users’ interactions with national trademark offices and the World Intellectual Property Organization (WIPO). These projects include, among others, the Common Status Descriptors project, the Identification project, and the Indexing of Non-Traditional Marks project.
Common Status Descriptors (CSD)
The CSD Project is designed to assist trademark owners and other interested parties in understanding the status of their applications and registrations in other offices, whether or not they understand the language, by using icons and common terms. In the past, partners have used terms to describe the status of applications and registrations that may be confusing to users outside their country or may not have been understandable without knowledge of the local language. While partners will continue to use terminology specific to their offices, they have now agreed to implement a series of Common Status Descriptors which will use icons and a second set of terms common to all of the partners.
CSDs for Live Application/Published for Opposition and Dead Registration/Expired
These icons and common terms were implemented by the USPTO in 2015 and have now been implemented by EUIPO, JPO, and SAIC. KIPO plans to implement the icons and common terms by the end of calendar year 2017. View all icons and common terms.
Identification Project (ID Project)
For global trademark filers, one bottleneck in applying in multiple jurisdictions has been the differing national practices in accepted application wording to identify the goods and services on which a mark will be used. To attempt to alleviate that bottleneck, the USPTO used the success of the U.S. ID Manual as an inspiration to create a harmonized TM5 ID List. To date the TM5 partners have agreed on more than 17,000 terms they will all accept. Applicants can determine whether a good or service has been agreed upon by the TM5 members by consulting the USPTO’s Manual of Acceptable Goods and Services. For example, if you search for the term “golf shoes,” you will see it is marked with a “T” meaning that it acceptable to all TM5 members.
The USPTO has also solicited participation in the project from a number of countries outside the TM5 members, and we are delighted to report that Colombia, Chile, Mexico, and Singapore have now each accepted more than 10,000 terms. Other current participants include Canada, the Philippines, and the Russian Federation, and we are seeking participation from a number of additional countries throughout the world.
Indexing of Non-Traditional Marks Project (INTM Project)
Non-traditional marks include three-dimensional, sound, single color, tactile, holographic, scent, movement marks, and more—basically all marks that include elements other than character data (words, letters, numerals, etc.) and designs. Trademark professionals have long acknowledged the difficulty in searching for non-traditional marks in the United States and around the world. Most national offices use the WIPO Vienna Classification System, or some variation thereof, to index the design elements in a trademark application. That system does not provide specific codes to index the elements of a non-traditional mark. The TM5’s INTM Project is designed to improve and potentially harmonize the TM5 Partners’ methods of searching for non-traditional trademarks.
We have worked to identify which member countries accept which types of non-traditional marks, and next we will determine how they index them. Once we have that information, the TM5 will move forward to determine best practices, with the potential for agreeing to a common standard amongst the TM5 and perhaps other national offices.
The USPTO is proud to play an important part in facilitating and harmonizing trademark filings throughout the world. The projects that USPTO is leading, along with other projects led by the other TM5 member countries, will contribute to a more streamlined global trademark system going forward.
USPTO Fights Fraudulent Trademark Solicitations
Guest blog by Commissioner for Trademarks Mary Boney Denison
The USPTO has worked hard to fight solicitations from companies fraudulently promising to protect trademarks, and we have taken a number of steps to help raise awareness of these schemes in an attempt to limit the number of victims defrauded. Our agency works closely with federal agencies, including the Department of Justice, the Federal Trade Commission, and the United States Postal Inspection Service to combat the problem.
The Department of Justice announced last week that two California men pled guilty in a mass-mailing scam that targeted owners of U.S. trademark applications. The men, Artashes Darbinyan and Orbel Hakobyan, admitted to stealing approximately $1.66 million from registrants and applicants of U.S. trademarks through companies called Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO). The USPTO is proud to have cooperated with law enforcement agencies in the California case.
Trademark solicitations have been a global problem for decades, including for USPTO customers, and we have implemented several measures to protect our customers against them.
First, the USPTO includes a warning and a link to our Non-USPTO Solicitations page in each office action, urging our customers to carefully review all correspondence regarding their application to ensure that they are responding to an official document from the USPTO rather than a private company solicitation.
Second, a similar warning, on bright orange paper, is sent to every registrant when the USPTO mails the paper registration certificate to the registrant.
Third, the USPTO has several online resources alerting the public to these non-USPTO solicitations on our Non-USPTO Solicitations page, including a frequently updated list of fraudulent entities we’ve already identified. If you receive an invoice from a company not appearing on this list, we encourage you to email us copies of the notice and the envelope it came in at TMFeedback@uspto.gov so that we may assess whether to add it to the list.
A registered trademark is a valuable asset, and where there’s money, unfortunately, there are bound to be criminal elements lurking. The USPTO continues to provide its ongoing full support to U.S. law enforcement officials working on this issue.
Trademarks Coast to Coast
Guest blog by Commissioner for Trademarks Mary Boney Denison
USPTO regional offices support the agency’s mission of fostering innovation by serving their regions’ intellectual property (IP) communities, assisting local businesses, and educating the public about the importance of IP. Regional office staff, in addition to USPTO trademark staff from headquarters, provide the public with full access to trademark information and resources in their local communities. This year, I visited all four regional offices: Denver and Silicon Valley in the fall, and Dallas and Detroit earlier in the year. During these visits, I had the chance to meet with USPTO employees, hear from local businesses, inventors, and IP practitioners about their concerns, and hold events on the importance of trademarks.
In September, I visited the Rocky Mountain Regional Office in Denver, where I got to see firsthand the vibrant IP community in the region, as well as the tireless work done by Director Molly Kocialski and the Denver office staff. I was excited to host the first interactive webcast trademark session in the Rocky Mountain region with USPTO trademark experts. With the help of representatives from the USPTO’s Trademark Assistance Center, we provided an overview of the trademark registration process and answered participants’ trademark questions. I also led an American Intellectual Property Association (AIPLA) Practitioner Roundtable, participated in a company listening tour, and provided important USPTO updates to area businesses.
I then visited the Silicon Valley Office in San Jose, California. Led by Director John Cabeca, the office has been busy supporting the active IP community and holding a variety of trademark events, from monthly lunch and learns to lectures on how to file international trademark applications under the Madrid Protocol. While in San Jose, I led an International Trademark Association (INTA) roundtable with Trademark Trial and Appeal Board (TTAB) judge Francie Gorowitz, designed to offer insights into USPTO operations and help us better understand the needs of those using our services. I also spoke at World Congress’ Corporate IP Counsel Forum conference on updates to trademark law, and met with Playstation,® Visa,® and Carbon3D, a cutting edge 3-D printing company.
In February, I visited the Texas Regional Office in Dallas, led by Director Hope Shimabuku. The office has already been holding monthly “Meet the Trademark Experts” to address trademark questions from the community. With Director Shimabuku, I participated in the office’s first all-day trademark workshop for the public, where we discussed Trademarks 101, filing options, the petitions process, and recent Trademark Office developments. Over the summer, the Texas Regional Office also held an all-day conference in San Antonio for independent inventors, entrepreneurs, and small business owners. Trademark’s Managing Attorney for Educational Outreach Craig Morris and several other USPTO representatives participated in the event, where they discussed the trademark process, what happens after a trademark registers, and pitfalls to avoid when filing for a trademark registration.
In March, I visited the Elijah J. McCoy Midwest Regional Office in Detroit, which regularly holds trademark-focused lunch and learn events, and workshops on the basics of trademarks, trademark searching, and the Madrid Protocol. The office has also frequently held outreach events with representatives from the TTAB, including Chief Judge Rogers. During my visit, I joined Detroit’s Regional Director Dr. Christal Sheppard at the State Bar of Michigan’s Spring IP Seminar at Michigan State University. While in East Lansing, I spoke with students and professors at the Michigan State College of Law, and then held a Trademark Lunch and Learn in Detroit with sixty entrepreneurs.
Just like USPTO staff here at headquarters, regional office staff are dedicated, hard-working employees committed to the mission of the USPTO. During my trips this year, I’ve met with a number of USPTO trademark employees in the Telework Enhancement Act Pilot Program (TEAPP), learned about their day-to-day work to help the public, and also heard their valuable suggestions on improving the services the USPTO provides. Meeting with inventors, businesses, and IP practitioners in innovation communities across the country, I have gained a better understanding of the issues and challenges they face. I look forward to another great year working with the USPTO regional offices to support innovators even further.
Posted at 10:38AM Dec 08, 2016 in trademarks |
New Trademark App Open Source Code on Github
Guest blog by Chief Technology Officer David Chiles
Improving the way the government delivers information technology (IT) solutions to its customers isn’t just a goal, it’s our mission. We at the U.S. Patent and Trademark Office know that by publishing our open source code, the public can help us come up with new and better IT solutions. In advance of the new Federal Source Code Policy and in support of the Administration’s Open Government Initiative, we have been publishing content on Github for over a year, and it now includes source code for a mobile application for trademarks.
The new published source code on Github is for a sample application enabling a user to access and track the status of a trademark. This application enables the user to receive a push notification anytime the status of a trademark application changes. The idea for this app began with feedback from the leadership in Trademarks, and we believe that it will also be a useful tool for our own employees. We’re making our code for this application open to the public, so you can also use it in your own projects, improve it so it works best for you, or create an entirely new application.
Through our Open Data and Mobility Program, we’ve already made over 200 years of intellectual property information available to the public, and have published application program interfaces (APIs) so you can more easily search, use, and manipulate patent and trademark information. We want to make it as easy as possible for you to use our data.
As America’s Innovation Agency, we hope that our open source initiatives will spur innovation and create new ideas. We are looking to the public to come up with the next greatest idea, like we recently did through our Cancer Moonshot Challenge.
Let us know how you like our Trademark app, and keep an eye on our Github page as we’ll be publishing more and more open source projects.
Posted at 03:03PM Nov 15, 2016 in trademarks |
Enhancements to Trademark Trial and Appeal Board Proceedings
Guest blog by Chief Administrative Trademark Judge Gerard F. Rogers
The Trademark Trial and Appeal Board (TTAB) announced the culmination of an in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal and trial processes. In a Notice of Final Rule-Making (NFRM), published in the Federal Register on October 7, 2016, the USPTO said new rule changes will benefit the public by providing more clarity in the rules, flexibility for parties involved in Board proceedings, and increased procedural efficiency. At the same time, the rules further a USPTO strategic objective to increase end-to-end electronic processing of trademark matters, which reduce costs to the USPTO and the public, and helps avoid errors that may creep into records during manual entry of data contained in paper filings.
The last major set of TTAB rule changes took effect in 2007. Since then, there have been case law developments, changes in the Federal Rules of Civil Procedure, and the rollout of the USPTO’s Accelerated Case Resolution (ACR) process. Therefore, it is an ideal time to update the rules to make the benefits of ACR available to all parties, as well as to promote electronic filing and communication. The rule changes, major provisions of which are summarized below, reflect significant input from the Trademark Public Advisory Committee, individual stakeholders, and professional associations, and have been well-received since publication in the Federal Register.
One of the most overarching rule changes involves the Board assuming responsibility for service of the complaint filed to initiate an inter partes proceeding. This rule change shifts responsibility for service of the complaint in an opposition or cancellation proceeding from the plaintiff to the Board, in an effort to reduce the responsibilities of litigants during the commencement of a proceeding.
Another exciting change is the Board moving exclusively to use of electronic filings and communication. In this new all-electronic environment, instead of mailing hard copies of institution orders and complaints, the Board forwards an order by email, with a link to both the proceeding file and the complaint, as displayed in the Board’s electronic docketing system known as TTABVUE. The rule changes also mandate that parties file documents through ESTTA, the Board’s electronic filing system. That requirement results in cost-savings to the USPTO and to private litigants, and will increase the efficiency with which the Board can process matters. Finally, filings and papers are now required to be exchanged between parties by email, with exceptions made for technical problems or extraordinary circumstances; and to allow the parties flexibility, they may agree to alternate methods of communication or exchange of documents and information that work best in their particular circumstances.
Reflecting recent amendments to the Federal Rules of Civil Procedure, new discovery provisions in the rule changes help curtail abuse and reduce litigation expense for stakeholders. The number of requests for production of documents and requests for admission are now limited to 75, paralleling the current limitation on interrogatories. To avoid disadvantaging parties that use requests for admission to authenticate produced documents, the changes provide for one comprehensive request for admission to the producing party to seek authentication of identified documents or specification of those documents which cannot be authenticated. This option facilitates introduction of produced documents at trial by notice of reliance, rather than through painstaking witness identification and testimony, thereby providing the parties more flexibility during trial. Finally, the rule changes afford the parties substantial flexibility to stipulate to various limitations on discovery in terms of duration, number of requests, and the elimination of discovery altogether.
Additionally, the rule changes establish new deadlines in discovery, paving the way for another significant change -- a requirement that motions to compel discovery or to determine the sufficiency of responses to requests for admission be filed prior to the deadline for plaintiff’s pretrial disclosures. These revisions help parties avoid the expense and uncertainty that arise when discovery disputes erupt on the eve of trial and ensure parties make pretrial disclosures and engage in trial preparation only after all discovery issues have been resolved. As with the timing of motions relating to discovery disputes, motions for summary judgment must be filed prior to the deadline for plaintiff’s pretrial disclosures. This avoids disruption of trial planning and preparation which can occur by filing such motions late in the process.
ACR procedures have proven particularly effective at streamlining trial proceedings. These include agreements to limit discovery and to shorten trial periods or the time between trial periods, and stipulations to certain facts or to the admissibility of documents or other evidence. Accordingly, parties are still able to enter into stipulations regarding proffers of testimony, but the rules allow any party unilaterally to choose to present trial testimony by affidavit or declaration, subject to the right of cross-examination by the adverse party or parties.
Finally, the rule changes include expanding the parties’ options through which evidence is submitted during trial. Parties may now make of record, via notice of reliance, pleaded registrations and registrations owned by any party by submitting a current copy of information from the USPTO electronic database records showing current status and title; and the rule changes codify this option. In addition, parties may now also use the notice of reliance method for submitting internet materials.
The rule changes become effective January 14, 2017, and apply to all proceedings pending at that time or begun thereafter. All employees at the Board, including our 243 information specialists and paralegals, our 245 attorneys, and our judges, have been involved in identifying these improvements, and we strongly believe that these changes help streamline our trial proceedings and avoid unnecessary expense and complications for parties involved in our cases. We continue to welcome any feedback you have on TTAB trial proceedings in order to increase clarity, efficiency, and effectiveness of our processes.
Posted at 03:03PM Nov 03, 2016 in trademarks |
National Trademark Expo October 21-22
Guest blog by Commissioner for Trademarks Mary Boney Denison
I am pleased to invite you to attend the 2016 National Trademark Expo on Friday October 21st and Saturday October 22nd in Washington, D.C. The two-day event is free and designed to educate the public about the instrumental role that trademarks play in business development and the value of trademarks for growth in the global marketplace.
The theme of the 2016 Expo is “Movement and Energy.” Highlighting key themes such as “Unusual Trademarks” and “Brand Evolution,” the Expo will offer a variety of educational seminars including “Trademark Basics,” “Applying to Seek Federal Registration” “What Happens After Registration,” and “Why Buy Legit.” A number of our country’s leading corporations, small businesses, and governmental agencies will also be on site, highlighting their trademarks and providing information on the benefits of federal trademark registration.
We’re very excited that this year’s opening ceremony, which takes place on Friday October 21st at 10 a.m., will feature the U.S. Army’s Continental Color Guard wearing replica 1784-style infantry uniforms as well as a singing of our National Anthem. This year, the guest speaker at the Expo’s opening ceremony will be Kevin Haley, Under Amour’s President of Category Management & Innovation, who will discuss the importance of Under Amour’s federal trademark registrations.
The Expo will also feature children's workshops and guided tours of educational content and exhibits. Costumed characters, led by our very own T. Markey, will be introduced during the opening ceremony and make appearances throughout both days of the Expo, and inflatable characters will be on display. This year’s Expo will feature exhibits and display cases of authentic goods alongside counterfeit goods, including a display by the Indian Arts and Crafts Board. Losses to U.S. businesses from counterfeiting of trademarked consumer products are estimated at billions of dollars and hundreds of thousands of jobs annually and create serious public health risks and safety hazards. The Expo is part of the Trademark organization’s continuous efforts to educate the public on the role of trademarks. The last several Trademark Expos attracted thousands of visitors of all ages and I encourage you to bring your friends and family.
If traveling by metro, the auditorium is a short walk from the Federal Triangle Metro station, or if driving, view directions and parking information. For additional information, please visit the Trademark Expo page of the USPTO website.
Posted at 09:51AM Oct 17, 2016 in trademarks |
Improving the Trademark Register
Guest Blog from Commissioner for Trademarks Mary Boney Denison
When selecting a mark for a new product or service, a business will search the USPTO database of registered marks to determine whether a particular mark is available. Registered trademarks that are not actually in use in commerce unnecessarily block someone else from registering the mark.
To ensure the accuracy of our trademark registry, in 2012, the USPTO launched a pilot program to gather data on whether registered marks were actually being used on the products and services listed on their registrations.
During the pilot, in 500 randomly-selected maintenance filings we required the registrant to submit proof of use for two additional items for each class listed on the registration. Although the registrant must submit one example of use per class in a maintenance filing, typically the registration will list multiple products or services for each class.
At the conclusion of the pilot, the USPTO determined that in more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods or services queried. This was in spite of the owner having recently sworn under penalty of perjury to such ongoing use as part of the maintenance filing. We issued a report on the results and held a roundtable to discuss the results and next steps. The consensus among roundtable participants was that the results of the pilot program indicated a need for some action to improve the accuracy and integrity of the register. As a result of these findings and input from the trademark community, we are now taking a three-pronged approach to tackling the so-called “deadwood” in our searchable database of registered marks.
First, we are increasing the readability of the registration declaration. We have reformatted the declaration to it make it more readable and therefore more likely for the signer to read the declaration swearing to use for each and every good or service listed.
Figure (1): Current Form
Figure (2): New Form
Second, we are planning to make the random audits of existing registrations permanent. A Notice of Proposed Rulemaking (NPRM) to make our random audits program permanent published June 22 in the Federal Register. The comment period recently closed and we are now drafting a final rule.
Once implemented, attorneys representing trademark registrants will be able to make registrants aware that, in order to maintain their registrations, they may be asked to submit and prove use on more than the one item of goods or services per class. Specifically, for selected registrations, we may require submission of information, exhibits, affidavits or declarations, and additional specimens to ensure that the register accurately reflects the marks are in use in United States for all goods and services identified in registrations, unless excusable nonuse exists.
Third, we are considering proposing one or more new or revised procedures to cancel registrations for marks either no longer in use or never in use. On April 28, the Trademark Public Advisory Committee convened an executive session to discuss the possibility of a new expungement procedure as well as several streamlined Trademark Trial and Appeal Board (TTAB) cancellation procedures. Preliminary meetings with various stakeholder groups continue. We are close to fully developing these concepts. Under consideration are options that include:
Ensuring the integrity of the Federal Trademark Register is of utmost importance to the USPTO. Please be on the lookout for further updates on this important topic.
Trademarks Moving Forward
Guest blog by Commissioner for Trademarks Mary Boney Denison
Our Trademarks Team is leading efforts to meet the continually changing intellectual property environment – by updating our IT systems, developing educational outreach programs, improving the accuracy and integrity of the trademark register, and ensuring that our trademark fees are fair and that they reflect the full cost of our services and products. It is our ongoing commitment to ensure accountability and to guarantee customer satisfaction.
As part of our multi-year effort to update our IT systems, I am pleased to announce that we have established the Office of the Deputy Commissioner for Trademark Administration to support IT, finance, and strategic planning. Earlier this month, Greg Dodson joined USPTO to fill this role. Greg’s primary responsibilities will be to manage the completion and transformation of the next generation of Trademark electronic systems, lead the financial management of the Trademark Organization, and guide the strategic vision of the Trademark Organization. A retired Air Force Colonel, Greg is a strong strategic thinker and an experienced senior leader who has led thousands in the U.S. and abroad throughout his career. His most recent position was a Senior Analyst and A2AD Subject Matter Expert in General Dynamics’ War Gaming Division. Greg has a Bachelor of Science degree in Management Information Systems from Florida State University, a Master of Science in National Resource Strategy from the National Defense University, and a Masters of Education in International Relations from Northwestern Oklahoma State University.
The Deputy Commissioner for Trademark Administration will be supported by two newly created senior level positions: the Information Technology Administrator and the Information Technology Legal Administrator. Information Technology Administrator Glen Brown is our subject matter expert for the continued development of Trademark IT systems, and Information Technology Legal Administrator Tanya Amos will serve as our subject matter expert for the interactions of Trademark applicants and their attorneys regarding Trademark IT systems.
Additionally, Trademarks is actively engaged in developing educational outreach programs that will offer the best possible intellectual property (IP) guidance and training to all. One of the ways in which we are educating the public is through a series of videos from our Trademark Information Network (TMIN). There are numerous videos covering an array of subject matters. One of our most popular videos, “Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later,” has now surpassed 500,000 views. It is quite apparent that the public sees value in these learning materials. We will continue to provide this service and look forward to expanding upon it in the future. We know that trademark litigation has the potential to harm small businesses, and we are committed to providing our stakeholders with resources to promote understanding of trademark basics, enforcement measures, and available tools for protecting and enforcing trademark rights.
Moreover, Trademarks is continually taking strides to improve the accuracy and integrity of the trademark register. In 2012, the USPTO instituted a pilot program which required additional specimens or other proof of use in connection with 500 randomly selected Section 8 or 71 Affidavits of Continued Use. At the conclusion of the pilot, the USPTO determined that in more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods/services queried. This was in spite of the owner having previously sworn to such ongoing use as part of a Section 8 or 71 affidavit filed to maintain the registration. We issued a report on the results and held a roundtable to discuss the results and next steps. The results of the pilot are available on the Trademarks Recent Postings page on the USPTO website. The consensus among roundtable participants was that the results of the pilot program indicated a need for some action to improve the accuracy and integrity of the register.
We at the USPTO agree with this conclusion and are now working to make the random audits permanent and to increase the solemnity of the declaration for Sec. 8 affidavits. A Notice of Proposed Rulemaking (NPRM) to make our random audits program permanent published June 22 in the Federal Register. Increasing the solemnity of the declaration does not require a rule change, but, later this summer, we plan to post the new language on Ideascale, an interactive online program that allows you to provide suggestions and comments. Additionally, we are considering proposing one or more new or revised procedures to cancel registrations for marks that are either no longer in use or have never been used. On April 28, the Trademark Public Advisory Committee convened an executive session to discuss the possibility of a new expungement procedure as well as several streamlined TTAB cancellation procedures. Preliminary meetings have since begun with various stakeholder groups and will continue over the next month to discuss our ideas and obtain feedback to aid us in fully developing the concepts.
Finally, last month, Trademarks published an NPRM to modify some of our fees. The purpose of this fee proposal is to further USPTO strategic objectives by: (1) better aligning fees with the full cost of products and services; (2) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials; and (3) promoting the efficiency of the process, in large part through lower-cost electronic filing options.
We hope to implement these fee changes in January 2017. Some key proposals are:
• Increase the fee for the paper filed application for registration by $225 to $600 per class.
• Increase fees for all other paper filings by $100 per class.
• Increase the fee for a regular TEAS application for registration by $75 to $400 per class.
• Increase the fee for failing to meet TEAS Plus or TEAS RF requirements from $50 to $125 per class.
• Increase fees for filing an affidavit of use under section 8 and 71 by $50 for filing electronically or $150 for filing on paper.
• Increase the fee for filing an ex parte appeal from $100 to $200.
• Increase the fees for filing oppositions and cancellations from $300 to $400.
By modifying these fees, we hope to discourage paper filings and responses (which cost the office more to process), further incentivize electronic filing and communication, and promote fairness so that the cost of paper processing is not being subsidized by electronic filers. Comments on the fee proposals are due by July 11, 2016. Please let us know what you think.
The Trademarks Team remains committed to increasing the efficiency of its processes and procedures. We are excited about moving forward, as we enhance our customers’ experience of doing business with the USPTO.
Posted at 03:29PM Jun 24, 2016 in trademarks |
Five Largest Trademark Offices Hold Annual Meeting at the USPTO
Guest Blog by Commissioner for Trademarks Mary Boney Denison
The USPTO is dedicated to working closely and regularly with its trademark office counterparts worldwide to cooperate on processes and exchange best practices. With that in mind, we hosted the 2015 TM5 Annual Meeting at USPTO headquarters December 1-2. The TM5 comprises the five largest trademark offices in the world: the USPTO, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the European Union’s Office for Harmonization in the Internal Market (OHIM), and the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China (SAIC). The annual meeting saw progress on a number of cooperative projects, including a vote to expand invitations to other countries to participate in the USPTO-led ID List Project, (which I’ll tell you more about below).
The TM5 is an outgrowth of the Trademark Trilateral, a cooperative framework established by JPO, OHIM, and the USPTO in 2001. That framework was expanded to include KIPO and SAIC in 2011 and 2012, respectively, and the group became known as TM5. The TM5 framework allows the partner offices to exchange information on trademark-related matters and to undertake cooperative activities aimed at harmonizing or improving their respective trademark protection systems and procedures. The 2015 TM5 Annual Meeting also included sessions with users, designed to obtain feedback on the existing efforts and to generate ideas and discussion about future work.
The work of the TM5 is structured through cooperative projects designed to improve users’ interactions with national trademark offices and the World Intellectual Property Organization (WIPO). These projects include, among others, minimizing bad faith filings, TMview, common status descriptions and ID List, and comparison of examination results and Madrid Protocol procedure.
Minimizing Bad Faith Filings
The TM5 partners continue to make efforts to minimize the incidence of bad faith trademark filings around the world by exchanging best practices in order to provide more transparent information to users. To that end, the TM5 published a report summarizing the partners offices’ best practices. The TM5 agreed at the 2015 Annual Meeting to continue to hold seminars with users and other national trademark offices to generate recommended solutions to this global problem. The next seminar for the TM5 partners to engage with users will be held in Tokyo, on March 1, 2016.
In order to make it easier for trademark applicants to access trademark information and to conduct global trademark clearance searches, the TM5 partners provide their trademark data to OHIM, the designated project leader for “User Friendly Access to Trademark Information.” The project, also known as “TMview,” allows users to conduct a single search of multiple databases, including data from OHIM, WIPO, and 43 trademark offices (which includes the USPTO, JPO, and KIPO). The TM5 partners expect that the trademark data from SAIC will be added to the system in 2016. TMview also provides a link to access the trademark prosecution history and all associated documents of an application file, if that information is provided by the national office.
Common Status Descriptors and ID List
To help make the search results of TMview or TM5 partner offices more understandable for users, the TM5 partners are developing and implementing “common status descriptors,” or uniform terms and icons that multiple national offices can use to signify the particular status of trademark registrations and applications. The USPTO is the designated lead for this project.
To improve global filing, the USPTO also leads a project to develop a harmonized global “pick list” of preapproved and pre-classified identifications (IDs) of goods or services and their translations, called the “TM5 ID List.” All of the TM5 partners participate in this project, as well as the national trademark offices of Canada, the Philippines, Singapore, Mexico, the Russian Federation, Colombia, and Chile. The ID List is now available online and is fully searchable. By including entries from this list in trademark applications filed in any of the participating countries, trademark applicants may avoid a refusal on the ground that the identification is indefinite or otherwise unacceptable. One significant development at this year’s TM5 Annual Meeting was a decision by the partners to expand the project to additional countries so that the TM5 ID List can be a truly global tool for use in offices around the world.
Comparison of Examination Results and Madrid Protocol Procedure
The TM5 partners are now comparing examination results for applications filed before each of the partners’ offices to see where practices might diverge or converge, in order to gain a better understanding of the partners’ practices and policies. The applications currently being reviewed were filed in all of the partner offices using the Madrid Protocol. Such analysis could provide helpful information to users, as well as to the partner offices regarding the ability to register applied-for marks.
Additionally, JPO leads a project to standardize information provided by the TM5 partner offices regarding practice and procedure related to designations under the Madrid System. This project will make it easier for global users to understand how to navigate prosecution in the various TM5 partner offices when filing via the Madrid Protocol.
A full list of the topics discussed at the TM5 Annual Meeting, as well as more information about TM5 in general, may be found on the TM5 website. SAIC will act as Secretariat in 2016 and will host the TM5 meetings, including the TM5 Annual Meeting, in China.
Posted at 05:11PM Jan 05, 2016 in trademarks |
More Details on Trademark Fee Reductions
Guest blog by Commissioner for Trademarks Deborah Cohn
Recently, Deputy Director Lee blogged about the status of the USPTO’s operating reserves. I want to tell you more about our proposal to reduce total trademark fee collections. The reduction is possible due to efficiencies that have allowed the office to create an operating reserve. The proposed reduction maintains a reserve sufficient to manage operations and address long term investments.
The notice of proposed rulemaking was published in the Federal Register last month and the deadline for public comment is June 23. The proposal would reduce many trademark application filing fees and renewal fees by 15 to 25 percent depending on how the application is filed. We’re especially pleased to be able to offer even lower fees for filing electronically, and accepting email communications from the USPTO, options that have proven to be popular with the majority of trademark filers.
The USPTO proposes to reduce the fee for an application filed using the regular TEAS application form by $50 to $275 per class if the applicant authorizes email communication and agrees to file all responses and other documents electronically during the prosecution of the application. This option will be known as a TEAS Reduced Fee (“TEAS RF”) application. The USPTO also proposes to reduce by $50 the fee for a TEAS Plus application to $225 per class and reduce by $100 the fee for a TEAS renewal of a registration to $300 per class.
The proposed fee reductions will reduce processing costs and promote efficiency for the USPTO and our customers. The proposal will also further a USPTO strategic objective to increase the end-to-end electronic processing of trademark applications by offering additional electronic application processing options and promoting online filing, electronic file management, and workflow.
The proposed reductions were included in the USPTO’s FY 2015 budget request. Fee reductions will be implemented in accordance with the America Invents Act (AIA) following public notice, comment, and rulemaking procedures. Our plan is to have the reduced fees become effective beginning in January 2015.
We look forward to working with our customers to offer lower cost options for filing and maintaining trademark registrations. Again, written comments must be received by June 23 to ensure consideration.
Posted at 10:09AM Jun 11, 2014 in trademarks |
Trademark Performance Update
Guest blog by Commissioner for Trademarks Deborah Cohn
The results for the second quarter of fiscal year 2014 demonstrate continued high performance by our Trademark team in meeting our strategic performance goal targets. I invite you to take a look at our updated performance, filing, and registration data that are now available on the Trademark dashboard.
The office has made great progress towards setting and achieving high quality standards. Quality results are evidence that the specialized training, online tools, and enhanced communication efforts we’re using are proving effective. The results for our newest quality standard for assessing efforts that go beyond procedural and statutory correctness continue to exceed our expectations. They demonstrate ‘exceptional’ results preparing a first action.
First action pendency—the time from filing to the initial examination—has been consistently maintained within the target range to issue a first action between 2.5 and 3.5 months from filing. Pendency to registration continues to remain at historically low levels. Disposal pendency—the time from when an application is filed until a trademark is registered or abandoned or a notice of allowance is issued for applications that are not in use—averaged 10.2 months, under the 12-month target. These results are due in part to the progress made from greater acceptance of electronic filing and in particular use of TEAS Plus applications which now make up 40 percent of new filings and more than 36 percent of new classes. Electronic filing and communications promotes more efficient and cost effective processing now comprises 80 percent of all applications processed to disposal.
Trademark application filings continued an upward trend, increasing by more than 4 percent compared to a year ago. New applications are expected to increase by nearly 5 percent this fiscal year to 455,000 classes.
We welcome any feedback you have on how we can improve the information presented through the Trademark Dashboard. Simply email a comment to our dedicated mailbox. We look forward to hearing from you.
Posted at 09:01AM May 01, 2014 in trademarks |
Update on Trademark Performance From our Third Quarter Dashboard
Guest blog by Commissioner for Trademarks Deborah Cohn
This month marks another record performance by our Trademarks team. Our goal to issue a first action between 2.5 and 3.5 months from filing has been met every month for six consecutive years now. This record is the result of a number of factors including greater use of the systems, tools, and resources necessary to manage new application filings electronically and the increased participation by applicants in filing and communicating electronically throughout the process. You can see this data on the Trademark dashboard, which has been updated with third quarter performance metrics. The following are some of the highlights we’ve identified.
Trademark application filings continue to set new record highs in terms of volume and usage of the Trademarks Electronic Application System (TEAS). More than 99 percent of new applications are filed electronically and filings are on track to exceed the highest level set last year.
The office has made great progress towards achieving and maintaining high quality standards. The specialized training, online tools, and enhanced communication efforts we’ve deployed over recent years are bearing fruit. Exceptional office action continues to exceed our expectations and first action quality is trending above our target level. Actual results were 33.5 percent better than the target of 23 percent. Final action compliance is showing positive improvement. Our final numbers for the fiscal year should reflect expectations.
Despite inherent uncertainty and variability of filings, the office proudly met or exceeded its pendency targets, including the ones for statements of use (SOU) and Post Registration renewals. First action pendency is at the mid-point of the target at three months. Pendency targets are managed through overtime and production incentives, in addition to continued use of electronic filing and processing.
We want to thank all our stakeholders for their positive engagement and their constructive comments and suggestions. We look forward to hearing from you. Share your thoughts with me at TMFeedback@uspto.gov.
Posted at 10:54AM Aug 22, 2013 in trademarks |
Advancing the Role of Trademarks
Guest blog by Commissioner for Trademarks Deborah S. Cohn
For the last two years the USPTO’s Trademarks team has actively engaged the private sector in developing pro bono and educational outreach programs. The primary goal of these programs is to offer the best possible intellectual property (IP) guidance and training to all of our stakeholders. These efforts follow the USPTO publication in April 2011 of a congressionally-mandated report outlining the extent to which trademark litigation harms small businesses. That report outlined steps the USPTO could take to better educate the public and stakeholders with resources enabling small businesses to further their understanding of trademark basics, enforcement measures, and available tools for protecting and enforcing trademark rights.
We have contacted bar associations in all fifty states to encourage the development of pro bono programs. The USPTO also launched a new trademark educational outreach program geared to general audiences that normally would not have easy access to such information, including non-trademark attorneys, the small business community, the entrepreneurial community, and students. In addition to these trademark-specific programs, the USPTO also conducts other programs designed to educate the public more broadly about intellectual property rights.
For several years, the USPTO has partnered with law schools across the country in an effort to provide pro bono services to trademark and patent applicants through student clinic programs under the supervision of licensed attorneys. In 2012, we dramatically increased the number of participating schools and therefore our reach into the community with these programs. We recently had the pleasure of welcoming to our headquarters more than 55 law students and faculty participating in our innovative Law School Clinic Certification Pilot Program. Visitors heard presentations from a wide range of USPTO personnel, including Acting Director Teresa Stanek Rea, attorneys from the Office of the Solicitor, and administrative trademark judges from the Trademark Trial and Appeal Board (TTAB).
The USPTO has also hosted a Trademark Expo for a number of years. These well-attended events combined seminars and exhibits to engage the public on trademarks and their importance. We have also published a significantly improved Basic Facts Booklet and produced a series of educational videos, all of which are easily accessible at www.uspto.gov.
We remain committed to advancing the registration of trademarks and understanding their role. As always, we welcome your feedback and suggestions on how we can improve our trademark educational outreach efforts. Simply email a comment to our dedicated mailbox, TMFeedback@uspto.gov. We look forward to hearing from you.
Posted at 11:32AM May 30, 2013 in trademarks |