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Jeffrey H. Kaufman

From:   Jeffrey H. Kaufman []
Sent:   Friday, August 04, 2006 10:51 AM
To:   TM Public Search Comments
Cc:   Robin Bren
Subject:   Comments on Proposed Rules: "Removal of Paper Search Collection of Marks that Include Design Elements"

The Honorable Jon Dudas
Undersecretary of Commerce for Intellectual Property
  and Director of the United States Patent and Trademark Office
Box Comments
P.O. Box 1450
Alexandria, VA  22313-1450
Re:   Comments on Proposed Rules:    Â“Removal of Paper Search Collection of Marks that Include Design Elements”
71 Federal Register 36065  (June 23, 2006)

Dear Undersecretary Dudas:

We appreciate being given the opportunity to comment on the notice entitled: "Removal of Paper Search Collection of Marks that Include Design Elements", which was published in the Federal Register, Vol. 71, No. 121, June 23, 2006. 

It is our understanding that the microfilm will be set up using the same classifications that are currently available and will be available for searching in the Public Search Facility at the U.S. Patent and Trademark Office (“USPTO”).  There is no indication in the notice as to how many readers will be available for use by the public.  In particular, it is not clear if the microfilm system will be available to multiple users in the same manner as the paper files.  Unlike computer access, which would enable access by multiple users at a time, microfilm will require access to the individual reels of microfilm, a microfilm reader and printer.  Presumably there will be no way to mark references of interest other than taking notes or printing them out at the time of viewing. 

In addition, we are concerned that "the new redundant design coding system will not be applied to the backfile, i.e. to applications filed or registrations issued before the date on which the system is implemented."   In particular, people who rely on the design code system that is not redundant may be searching an incomplete record without realizing the limitations.

In response to the USPTO's invitation to applicants to correct improper or incomplete pseudo-mark data and design coding, we urge the USPTO not to rely too heavily on this approach to catch errors.  Such inquiries outside of the examination process are likely to be seen as the USPTO simply trying to shift the burden.  Furthermore, it is unlikely that applicants will respond to such inquiries, especially with the increased number of filings by foreign individuals and entities and pro se applicants.

The USPTO is moving in the right direction to ensure the integrity and availability of records.  The steps being taken in this regard are appreciated. 

Respectfully submitted,

Jeffrey H. Kaufman    David J. Kera
Roberta S. Bren Jonathan Hudis
Kathleen Cooney-Porter Jordan S. Weinstein
Brian B. Darville  

Trademark and Copyright Practice Group
Oblon, Spivak, McClelland, Maier & Neustadt, PC
1940 Duke Street
Alexandria, VA  22314
Fax: 703-413-2220

United States Patent and Trademark Office
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