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Good afternoon, thank you all for

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attending today's roundtable on the

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Trademark Modernization Act or TM.

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A notice of proposed rulemaking.

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The slides from today's presentation are

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posted on the TMI page on our website.

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This roundtable is being recorded and

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will be made available for viewing on

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our website within two to three weeks.

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If you encounter any technical

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difficulties during the Roundtable,

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please email virtual events

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at uspto.gov for assistance.

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If you have questions for the panel,

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please send an email to TM

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underscore webinar at USPTO Gov.

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The panel will answer as many questions

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as possible during today's session.

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Now I will turn it over to the

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Commissioner for trademarks.

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David Gooder to provide opening

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remarks Commissioner Gutter.

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Thanks Joshua very much,

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good afternoon everyone in a few minutes

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you'll be hearing from Amy Cotton,

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the deputy Commissioner for trademark

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examination policy at the USPTO.

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Amy is going to take you through

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the proposed rules for the TMI

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in order to implement it.

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Before she does, though,

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however,

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I wanted to share with you a few

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thoughts of mine about the TMI.

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If you haven't already heard this

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year marks the 75th anniversary of

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the enactment of the Lanham Act.

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Are trademark law has stood the test of time.

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Important amendments over the years

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have been few, but when they have been,

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they've been significant.

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This is the case with the TMI.

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When the left while the latter window,

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Adam actress pass gives me the

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world was a very different place,

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however,

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and the challenges we face today

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with regard to the integrity of

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the register and its registrations

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simply weren't part of the landscape,

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so that EMA has come along at

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an opportune time.

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And in implementing we wanted to

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do two things a bit differently

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than than we've done in the past.

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First,

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we sought comments and input from

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stakeholders and our customers early

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in the process to get their initial.

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Thoughts about implementation.

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We included many of those

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comments in the draft.

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Second of all,

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you'll notice when you've read it

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that we included in the draft a

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number of options for some of the

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rules and procedures are thought was

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that by doing this you'll be able to

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consider some of the things we were

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considering and be able to provide

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productive comments in areas where

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more than one good option is possible.

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In this way,

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when the final rule is published,

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we're confident that the rules

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will have been well thought.

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Through will be effective and in

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generally supported by the TM community.

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As I prepared my remarks for today,

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my thoughts turned to the protection

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of our trademark register,

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which is one of the bedrocks

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of the trademark ecosystem.

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Quite simply,

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the integrity of the register

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ensures that brand owners are able

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to protect their IP and succeed

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in the US and global markets.

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It's for this reason that protecting the

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integrity of the US trademark register

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is and will remain for some time.

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One of our absolute top priorities.

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In that vein, we welcome the TMI

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as we believe it will contribute

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in a significant way to that goal.

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So enough for me.

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Let me now turn it over to Amy

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Cotton or Deputy Commissioner for

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trademark examination policy, Amy.

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Thanks Dave, good afternoon

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ladies and gentlemen.

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I'm delighted to be here with you

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alongside my distinguished colleagues

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here at the USPTO to share our plans

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for the implementing implementation

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of the provisions of the Trademark

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Modernization Act of 2020.

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Joining me today are, as you heard,

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Commissioner Dave Gutter.

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We've got deputy Chief Judge Mark Fuhrman.

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We've got deputy Commissioner for

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trademark operations Dan Vanessa

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and the senior trademark legal

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policy adviser Robert Levin,

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who's very much responsible

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for the rule package.

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That we're talking about today.

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The notice of proposed rulemaking I'm

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going to call it the NPRM for short the

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NPRM for the TMA issued on May 18th,

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a bit ahead of schedule,

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which was quite nice.

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The comment period is 60 days.

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That means that your written

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formal comments are due to

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theregulations.gov portal by July 19th.

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Your comments must be submitted to

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theregulations.gov portal in order

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to be included in the records of

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our formal rulemaking process.

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The ANPRM contains proposals to amend

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the existing letter protest rule to

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indicate that the letter of protest

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determinations are final and non reviewable.

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It establishes flexible Office

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action response periods.

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It establishes exparte expungement

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and reexamination proceedings for

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cancellation of a registration when

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the required use in commerce or the

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registered mark has not been made.

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It provides for a new non use ground for

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cancellation before the trademark trial

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and Appeal board and the whole package.

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Also sets fees for the petitions

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requesting institution of the ex

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parte expungement and reexamination

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proceedings and for request to extend

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office action response deadlines.

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Also in the rule package are amendments

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for the rules concerning suspension of

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USPTO proceedings and the rules governing

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attorney recognition and trademark matters.

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Finally,

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we've got a new rule proposed to address

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procedures regarding a court orders

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cancelling or affecting registrations.

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All the rules in the MPR subject to

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change based on your formal comments.

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Remember, your formal comments

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submitted to regulations.gov.

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These rules will not take effect until

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the date indicated in the final rule

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for expungement and re examination.

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However, implementation is required

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by the statute by December 2020,

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7th, 2021.

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For the flexible response periods that EMA

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does not dictate a date of implementation,

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and so the USPTO has proposed in

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the whole package that we might

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delay implementation six months,

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so that would be June 27th,

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2022.

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That's for the sake of your docking

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systems as well as ours.

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Any input today that we receive your

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email or through folks providing comments

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or questions online is considered

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informal and will not form part of

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the formal rulemaking record unless

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submitted in writing to register.gov.

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Regulations Gov pardon me.

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We're going to start with the

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letter of protest.

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The USPTO issued rules formalizing the

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letter of protest procedures consistent

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with the TMA at the end of last year.

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So all that's left for us to do

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right now is to tweak rule .37

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CFR 2.149 to mirror the statutory

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language that any determination

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by the USPTO director whether to

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include letter protest evidence in

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the record of an application shall

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be final and non reviewable.

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And that any such determination

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shall not prejudice any parties right

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to raise any issue and rely on any

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evidence in any other proceeding.

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I would note because I've gotten

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questions on this point that

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codifying the existing letter

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protest procedure has not resulted

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in any changes to the practices that

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have been in place for many years,

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except for two things minor things.

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Now there's a fee now for $50 when you file

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a letter of protest and under the statute,

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the USPTO now has two months in

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which to make a determination

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on whether to send the evidence

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submitted by the protester to the

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examining attorney for consideration.

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So these are minor changes,

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but everything else is the letter of protest.

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Procedure that you that you've

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known for many many years.

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Now the second big bucket in the TMI

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is the flexible response periods.

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So in the NPRM, you might notice that

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in the rule text we have one option

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for for how we could see flexible

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response period implementation working,

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but we actually offer two other

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options in the. In the text,

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it's in the explanatory section,

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so you might want to view those three

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options and see what you think.

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All options would apply to the

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response periods in examination

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as well as in post registration.

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However, the shortened response period

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would not apply to a section 66,

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a Madrid application or registration.

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The various treaty provisions and

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procedures in the Madrid system

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for the international registration

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of marks at the World Intellectual

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Property Organization would make

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it very difficult for international

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applicants and registrants to meet

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those were shortened response period

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deadlines in the United States.

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So we have carved that proposed to

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carve them out in in the implementation.

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So the NPRM has three options.

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The first option, pretty straightforward,

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a standard three month response

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period for all office action,

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extended one time to the full six months.

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We're proposing an extension

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fee of $125 per request.

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This is not a per class fee.

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This is a per request fee.

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Our thinking was that we might wish

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to propose a shortened period for

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only those responses to office actions

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that contained simple requirements,

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but it became very difficult to

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distinguish which office actions

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could be considered simple and which

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would be more complex without leaving

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it up to an individual examining

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attorney on a case by case basis.

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A bright line rule seemed easier

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for everyone's docking system and

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consistent with the intent of the TMI,

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so this proposal is reflected in

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the Imperium rule text option two.

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It contained an explanatory section.

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It proposes two separate response

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periods that could form the basis

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for implementing what we call

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a two phase examination system.

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The first phase would be for

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formalities examination and it would

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feature a two month response period.

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Initially under the TMA.

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This would then be extendable

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in two month increments.

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Up to the full six months upon

283
00:09:42,875 --> 00:09:44,640
request and payment of the fee,

284
00:09:44,640 --> 00:09:46,506
the second phase would be for

285
00:09:46,506 --> 00:09:48,107
substantive examination and it would

286
00:09:48,107 --> 00:09:49,925
have a three month response period.

287
00:09:49,930 --> 00:09:52,418
Also extendable up to the full six months.

288
00:09:52,420 --> 00:09:54,412
Now if you do the math you would

289
00:09:54,412 --> 00:09:55,911
realize that this option could

290
00:09:55,911 --> 00:09:57,801
result in an increase in total

291
00:09:57,801 --> 00:09:59,623
pendency for a particular application

292
00:09:59,623 --> 00:10:01,433
if all extensions are pursued,

293
00:10:01,440 --> 00:10:03,211
but we are looking at it because

294
00:10:03,211 --> 00:10:05,180
it could give us flexibility to

295
00:10:05,180 --> 00:10:06,720
handle this formalities issues.

296
00:10:06,720 --> 00:10:08,454
First issue an office action and

297
00:10:08,454 --> 00:10:10,782
then come back for the substantive

298
00:10:10,782 --> 00:10:11,890
examination separately.

299
00:10:11,890 --> 00:10:13,786
We'd love your comments on that.

300
00:10:13,790 --> 00:10:15,668
Option three is the patent model.

301
00:10:15,670 --> 00:10:17,875
We couldn't get away with a rule

302
00:10:17,875 --> 00:10:19,497
package for trademarks that didn't

303
00:10:19,497 --> 00:10:21,639
have some piece of patents in there.

304
00:10:21,640 --> 00:10:23,518
And here we have option 3.

305
00:10:23,520 --> 00:10:25,050
The initial response period in

306
00:10:25,050 --> 00:10:27,290
every case would be a two months,

307
00:10:27,290 --> 00:10:29,114
but it could be extended increments

308
00:10:29,114 --> 00:10:31,059
up to the full six months.

309
00:10:31,060 --> 00:10:32,788
The applicant would file file the

310
00:10:32,788 --> 00:10:34,684
extension request in fee within the

311
00:10:34,684 --> 00:10:36,419
response period the extension fees

312
00:10:36,419 --> 00:10:38,098
get progressively higher as the

313
00:10:38,098 --> 00:10:39,844
applicant requests more time to respond.

314
00:10:39,850 --> 00:10:41,146
So like for instance,

315
00:10:41,146 --> 00:10:42,766
the first extension fee could

316
00:10:42,766 --> 00:10:44,650
be $50.00 for a third month.

317
00:10:44,650 --> 00:10:47,827
75 for a fourth month and $125 for a

318
00:10:47,827 --> 00:10:51,554
fifth month and $150 for the full six months.

319
00:10:51,560 --> 00:10:52,955
The application is abandoned if

320
00:10:52,955 --> 00:10:54,667
the deadline is missed without the

321
00:10:54,667 --> 00:10:56,017
extension request to revive the

322
00:10:56,017 --> 00:10:57,477
petition to provide must include

323
00:10:57,477 --> 00:10:58,809
the applicable extension fee.

324
00:10:58,810 --> 00:11:01,000
Depending on when the petition is

325
00:11:01,000 --> 00:11:03,420
filed after the initial miss deadline.

326
00:11:03,420 --> 00:11:04,800
We would appreciate your comments

327
00:11:04,800 --> 00:11:06,455
on which of these options would

328
00:11:06,455 --> 00:11:07,550
be most useful to you.

329
00:11:09,880 --> 00:11:12,576
Now the third big bucket in the TMI,

330
00:11:12,580 --> 00:11:14,729
and in this rule package or the

331
00:11:14,729 --> 00:11:16,824
non use cancellation for the new

332
00:11:16,824 --> 00:11:18,308
non use cancellation mechanisms.

333
00:11:21,120 --> 00:11:23,345
So these new proceedings for

334
00:11:23,345 --> 00:11:25,570
cancelling registrations for non use

335
00:11:25,639 --> 00:11:28,225
were the NPRM has the procedures

336
00:11:28,225 --> 00:11:29,949
to implement these proceedings

337
00:11:30,022 --> 00:11:32,350
with the first one is expungement.

338
00:11:32,350 --> 00:11:33,940
The target of these proceedings

339
00:11:33,940 --> 00:11:36,949
is a mark in a Section 1 use

340
00:11:36,949 --> 00:11:38,745
based registration Section 44

341
00:11:38,745 --> 00:11:40,929
Paris Registration or Section 66,

342
00:11:40,930 --> 00:11:41,846
Madrid registration,

343
00:11:41,846 --> 00:11:45,052
where the mark has never been used.

344
00:11:45,060 --> 00:11:47,580
On all or some of the goods

345
00:11:47,580 --> 00:11:49,780
identified in the registration.

346
00:11:49,780 --> 00:11:51,615
The petition to request institution

347
00:11:51,615 --> 00:11:53,765
of the expungement proceedings may be

348
00:11:53,765 --> 00:11:55,821
filed in the window of time between year

349
00:11:55,821 --> 00:11:57,758
three and year 10 after registration.

350
00:11:59,900 --> 00:12:01,566
The team may also provides that expungement

351
00:12:01,566 --> 00:12:03,500
is a new ground for cancellation at

352
00:12:03,500 --> 00:12:05,258
the trademark trial and Appeal Board.

353
00:12:05,260 --> 00:12:07,199
However, keep in mind the timing is

354
00:12:07,199 --> 00:12:09,010
a bit different for a TTAB claim.

355
00:12:09,010 --> 00:12:10,683
The claim is available at anytime after

356
00:12:10,683 --> 00:12:12,500
the first three years post registration.

357
00:12:12,500 --> 00:12:15,065
It does not cut off at year 10 like

358
00:12:15,065 --> 00:12:17,768
the proceedings before the director.

359
00:12:17,770 --> 00:12:19,588
Please note that the claim of

360
00:12:19,588 --> 00:12:21,425
expungement does not affect any other

361
00:12:21,425 --> 00:12:23,399
already available non use claim at the

362
00:12:23,399 --> 00:12:25,388
TTAB that is abandonment or non use,

363
00:12:25,390 --> 00:12:27,148
nor does it impact the timing

364
00:12:27,148 --> 00:12:28,027
for those claims.

365
00:12:28,030 --> 00:12:30,235
Now I want to be very clear that expungement

366
00:12:30,235 --> 00:12:32,416
and abandonment are two different claims.

367
00:12:32,420 --> 00:12:33,850
Abandonment requires you know as

368
00:12:33,850 --> 00:12:35,640
you know the the intent issue.

369
00:12:35,640 --> 00:12:37,600
It comes comes into play and with

370
00:12:37,600 --> 00:12:39,749
expungement there is no evaluation of intent.

371
00:12:39,750 --> 00:12:42,446
So I want to be clear that those

372
00:12:42,446 --> 00:12:44,639
are two different claims.

373
00:12:44,640 --> 00:12:46,705
A further point on the timing of

374
00:12:46,705 --> 00:12:48,503
these petitions just keep in mind

375
00:12:48,503 --> 00:12:50,207
that EMA provides for three years

376
00:12:50,207 --> 00:12:52,131
from enactment two years from

377
00:12:52,131 --> 00:12:54,106
implementation that a petition for

378
00:12:54,106 --> 00:12:56,465
expungement may be filed against the

379
00:12:56,465 --> 00:12:58,760
registration that's over 10 years old.

380
00:12:58,760 --> 00:13:02,330
So for the next two years

381
00:13:02,330 --> 00:13:03,520
after implementation.

382
00:13:03,520 --> 00:13:05,170
A petition for expungement can be

383
00:13:05,170 --> 00:13:07,050
filed any at any registration,

384
00:13:07,050 --> 00:13:08,334
regardless of that window,

385
00:13:08,334 --> 00:13:09,939
between year three and 10.

386
00:13:09,940 --> 00:13:11,866
Any registration that's three years old.

387
00:13:11,870 --> 00:13:13,470
The intent is, of course,

388
00:13:13,470 --> 00:13:15,324
to provide that the clearance of

389
00:13:15,324 --> 00:13:17,219
older Deadwood off of the register

390
00:13:17,219 --> 00:13:19,305
for this two year period that it

391
00:13:19,305 --> 00:13:21,033
should be accelerated during that

392
00:13:21,033 --> 00:13:22,748
period clear off the Deadwood

393
00:13:22,748 --> 00:13:25,900
and clean up the register early.

394
00:13:25,900 --> 00:13:27,116
Now the second proceeding,

395
00:13:27,116 --> 00:13:28,940
it's called re examination and the

396
00:13:28,992 --> 00:13:30,735
target of these proceedings is a mark

397
00:13:30,735 --> 00:13:32,412
in a Section 1 registration that was

398
00:13:32,412 --> 00:13:34,434
not in use as of the relevant date.

399
00:13:34,434 --> 00:13:36,194
The relevant date for purposes

400
00:13:36,194 --> 00:13:38,492
of a proceeding in a Section 1

401
00:13:38,492 --> 00:13:39,967
application is the filing date,

402
00:13:39,970 --> 00:13:41,895
presuming that it was not amended at

403
00:13:41,895 --> 00:13:44,269
any time to a section 1B filing basis,

404
00:13:44,270 --> 00:13:46,251
then the relevant date for purposes of

405
00:13:46,251 --> 00:13:48,267
a section 1B application is the later

406
00:13:48,267 --> 00:13:50,279
of the filing date of the amendment

407
00:13:50,279 --> 00:13:52,295
to allege use or the expiration of

408
00:13:52,295 --> 00:13:55,890
time to file a statement of use.

409
00:13:55,890 --> 00:13:58,512
A petition to request institution of

410
00:13:58,512 --> 00:14:00,713
reexamination proceedings may be filed

411
00:14:00,713 --> 00:14:03,429
in the first five years after registration.

412
00:14:03,430 --> 00:14:04,878
For both expungement reexamination,

413
00:14:04,878 --> 00:14:06,688
those time periods are critical.

414
00:14:06,690 --> 00:14:08,495
Once that window for requesting

415
00:14:08,495 --> 00:14:09,578
proceedings is closed,

416
00:14:09,580 --> 00:14:11,390
these tools before the director

417
00:14:11,390 --> 00:14:12,838
are no longer available.

418
00:14:12,840 --> 00:14:14,961
But of course any interested party can

419
00:14:14,961 --> 00:14:17,251
always bring a claim before the TTAB

420
00:14:17,251 --> 00:14:19,237
or Federal District Court for Nonuse

421
00:14:19,300 --> 00:14:21,528
abandonment expungement is appropriate.

422
00:14:26,680 --> 00:14:28,710
Now the NPRM lays out the matching

423
00:14:28,710 --> 00:14:31,310
procedure that will be followed in both

424
00:14:31,310 --> 00:14:32,978
expungement and reexamination proceedings.

425
00:14:32,980 --> 00:14:34,560
And both were proposing a

426
00:14:34,560 --> 00:14:36,140
600 per class petition fee.

427
00:14:36,140 --> 00:14:38,394
The fee is designed to strike the

428
00:14:38,394 --> 00:14:40,212
balance between cost recovery and

429
00:14:40,212 --> 00:14:42,182
providing a less expensive alternative

430
00:14:42,182 --> 00:14:44,379
to a contested TTAB proceeding.

431
00:14:44,380 --> 00:14:46,120
Any person may file a petition

432
00:14:46,120 --> 00:14:48,240
requesting that either an expungement or

433
00:14:48,240 --> 00:14:50,040
examination proceeding be instituted.

434
00:14:50,040 --> 00:14:51,725
Only one registration per petition

435
00:14:51,725 --> 00:14:53,794
will be allowed and the basis

436
00:14:53,794 --> 00:14:55,744
for that petition must be either

437
00:14:55,744 --> 00:14:57,480
expungement or re examination,

438
00:14:57,480 --> 00:15:00,819
but not both in the same position.

439
00:15:00,820 --> 00:15:02,550
Combining them into one partition

440
00:15:02,550 --> 00:15:04,280
creates a mighty difficulties and

441
00:15:04,333 --> 00:15:06,008
could be problematic for examination

442
00:15:06,008 --> 00:15:07,683
because the evidence for the

443
00:15:07,743 --> 00:15:09,498
different bases will be different.

444
00:15:09,500 --> 00:15:09,863
However,

445
00:15:09,863 --> 00:15:12,041
even if the petitions are required

446
00:15:12,041 --> 00:15:13,930
to be filed separately,

447
00:15:13,930 --> 00:15:16,535
the director can consolidate review

448
00:15:16,535 --> 00:15:18,619
of multiple petitions against

449
00:15:18,619 --> 00:15:20,580
the same registration.

450
00:15:20,580 --> 00:15:22,708
Now the team says any person can file,

451
00:15:22,710 --> 00:15:24,384
so the statute itself makes clear

452
00:15:24,384 --> 00:15:26,303
that there should be no standing

453
00:15:26,303 --> 00:15:27,787
requirement for the petitioner.

454
00:15:27,790 --> 00:15:29,722
The petitioner is not anonymous because

455
00:15:29,722 --> 00:15:32,181
the petition must be filed through TIS and

456
00:15:32,181 --> 00:15:34,340
that means through a USPTO Gov account.

457
00:15:34,340 --> 00:15:34,632
Also,

458
00:15:34,632 --> 00:15:36,092
the petitioner must provide a

459
00:15:36,092 --> 00:15:37,863
domicile address so that we can

460
00:15:37,863 --> 00:15:39,507
determine if the petitioner is formed,

461
00:15:39,510 --> 00:15:41,544
domiciled and thus would need to

462
00:15:41,544 --> 00:15:43,295
include the designation of AUS

463
00:15:43,295 --> 00:15:44,627
attorney in the petition.

464
00:15:44,630 --> 00:15:46,220
If the attorney is designated,

465
00:15:46,220 --> 00:15:48,446
the petition must include the attorney name,

466
00:15:48,450 --> 00:15:49,492
postal address,

467
00:15:49,492 --> 00:15:50,534
email address,

468
00:15:50,534 --> 00:15:52,097
and bar information.

469
00:15:52,100 --> 00:15:54,628
If a petition is filed but is incomplete,

470
00:15:54,630 --> 00:15:57,478
the USPTO may issue a 30 day letter

471
00:15:57,478 --> 00:16:00,128
to address the missing information.

472
00:16:00,130 --> 00:16:02,050
Now I kind of wanted to circle back

473
00:16:02,050 --> 00:16:03,972
to the anonymity question that I do

474
00:16:03,972 --> 00:16:06,371
get a lot because I wanted to note

475
00:16:06,371 --> 00:16:08,297
the USPTO is not currently proposing

476
00:16:08,297 --> 00:16:09,935
that the petitioner be required to

477
00:16:09,935 --> 00:16:11,730
identify the real party in interest.

478
00:16:11,730 --> 00:16:13,428
We're doing this for two reasons.

479
00:16:13,430 --> 00:16:13,734
First,

480
00:16:13,734 --> 00:16:15,254
if the petitioner establish is

481
00:16:15,254 --> 00:16:17,108
a prime aphasia case of non use,

482
00:16:17,110 --> 00:16:18,965
then theoretically it makes no

483
00:16:18,965 --> 00:16:20,820
difference for purposes of adhering

484
00:16:20,883 --> 00:16:22,731
to the intent of the TMA who

485
00:16:22,731 --> 00:16:24,678
that petitioner is or whom he or

486
00:16:24,678 --> 00:16:25,497
she is representing.

487
00:16:25,500 --> 00:16:27,096
The ultimate goal of the proceeding is

488
00:16:27,096 --> 00:16:28,558
to clear Deadwood from the Register,

489
00:16:28,560 --> 00:16:30,816
regardless of who requested the proceedings.

490
00:16:30,820 --> 00:16:31,117
Second,

491
00:16:31,117 --> 00:16:32,899
once the petitioner files the petition,

492
00:16:32,900 --> 00:16:34,650
the petitioner is out of the process

493
00:16:34,650 --> 00:16:36,139
to hold the petitioner accountable

494
00:16:36,139 --> 00:16:38,540
in the context of the preceding for

495
00:16:38,540 --> 00:16:40,088
failing to provide accurate information

496
00:16:40,088 --> 00:16:42,067
as to the real party in interest

497
00:16:42,067 --> 00:16:43,866
would require the petitioner to be a

498
00:16:43,866 --> 00:16:45,670
party to the proceeding throughout,

499
00:16:45,670 --> 00:16:48,334
but that was not the intent of the TMA.

500
00:16:48,340 --> 00:16:48,638
Instead,

501
00:16:48,638 --> 00:16:49,830
we have an option.

502
00:16:49,830 --> 00:16:51,450
We believe that the petitioner who

503
00:16:51,450 --> 00:16:52,880
uses the proceedings to harass

504
00:16:52,880 --> 00:16:54,370
registrants could be sanctioned outside

505
00:16:54,370 --> 00:16:56,360
of the context of the proceedings.

506
00:16:56,360 --> 00:16:57,018
That is,

507
00:16:57,018 --> 00:16:58,663
through the sanction authority of

508
00:16:58,663 --> 00:17:00,280
the Commissioner for trademarks.

509
00:17:00,280 --> 00:17:02,230
The Commissioner for trademarks may

510
00:17:02,230 --> 00:17:03,790
sanction individuals making submissions

511
00:17:03,790 --> 00:17:05,787
to the USPTO for improper purpose.

512
00:17:05,790 --> 00:17:07,824
If the USPTO were to discover

513
00:17:07,824 --> 00:17:09,180
through our ongoing investigations

514
00:17:09,240 --> 00:17:11,070
for fraudulent and bad faith

515
00:17:11,070 --> 00:17:12,534
submissions that petitioner was

516
00:17:12,534 --> 00:17:14,228
actually abusing the proceedings,

517
00:17:14,230 --> 00:17:16,285
the USPTO could preclude submissions

518
00:17:16,285 --> 00:17:18,773
in any proceeding before the USPTO

519
00:17:18,773 --> 00:17:20,939
by that petitioner and the party

520
00:17:20,939 --> 00:17:23,100
the petitioner may be representing.

521
00:17:23,100 --> 00:17:24,580
We could also terminate anyuspto.gov

522
00:17:24,580 --> 00:17:26,390
account created by the bad actor.

523
00:17:26,390 --> 00:17:27,434
So for an example,

524
00:17:27,434 --> 00:17:29,351
the ethical duty of candor that applies

525
00:17:29,351 --> 00:17:31,430
to any party practicing before the USPTO

526
00:17:31,430 --> 00:17:33,859
would be violated and subject to sanctions.

527
00:17:33,860 --> 00:17:36,233
If the petitioner did not disclose all

528
00:17:36,233 --> 00:17:38,297
material facts known that would enable

529
00:17:38,297 --> 00:17:40,593
the office to make an informed decision

530
00:17:40,651 --> 00:17:42,779
whether or not the facts are adverse.

531
00:17:42,780 --> 00:17:44,814
This would include situations where the

532
00:17:44,814 --> 00:17:47,304
petitioner knew that a mark was in use

533
00:17:47,304 --> 00:17:49,410
when the petition alleges that it was not.

534
00:17:49,410 --> 00:17:51,240
So once they complete petition is

535
00:17:51,240 --> 00:17:53,282
filed a courtesy email notice of the

536
00:17:53,282 --> 00:17:55,518
filing of the petition will go to the

537
00:17:55,518 --> 00:17:57,468
registrar and the registrar's attorney.

538
00:17:57,470 --> 00:17:59,794
The petition and evidence will also be

539
00:17:59,794 --> 00:18:02,097
uploaded into the trademark status and

540
00:18:02,097 --> 00:18:04,587
document retrieval system and made public.

541
00:18:04,590 --> 00:18:06,389
No response from the registrant to the

542
00:18:06,389 --> 00:18:08,606
filing of the petition will be accepted

543
00:18:08,606 --> 00:18:10,688
unless and until proceedings are instituted.

544
00:18:14,550 --> 00:18:16,590
Now the petition must include that

545
00:18:16,590 --> 00:18:17,950
verified statement that identifies

546
00:18:18,001 --> 00:18:19,586
the elements of the petitioner's

547
00:18:19,586 --> 00:18:20,854
investigation of non use.

548
00:18:20,860 --> 00:18:22,184
Where did you search?

549
00:18:22,184 --> 00:18:23,508
How did you search?

550
00:18:23,510 --> 00:18:24,874
When did you search?

551
00:18:24,874 --> 00:18:27,501
What did you find as to each

552
00:18:27,501 --> 00:18:30,016
source of information relied upon?

553
00:18:30,020 --> 00:18:30,725
Now, of course,

554
00:18:30,725 --> 00:18:32,135
the reasonableness of the search and

555
00:18:32,135 --> 00:18:33,800
the number and nature of the sources.

556
00:18:33,800 --> 00:18:35,280
The petitioner must search will

557
00:18:35,280 --> 00:18:36,760
be determined case by case.

558
00:18:36,760 --> 00:18:38,422
Because the evidence of non use

559
00:18:38,422 --> 00:18:39,530
that's thought will necessarily

560
00:18:39,581 --> 00:18:41,057
differ depending on the nature of

561
00:18:41,057 --> 00:18:42,858
the goods and services at issue in

562
00:18:42,858 --> 00:18:44,133
the proceedings and their relevant

563
00:18:44,133 --> 00:18:45,937
channels of trade and advertising.

564
00:18:45,937 --> 00:18:48,082
Now those sources must be

565
00:18:48,082 --> 00:18:48,940
reasonably accessible,

566
00:18:48,940 --> 00:18:52,510
and ones that can be publicly disclosed.

567
00:18:52,510 --> 00:18:54,066
Appropriate sources of information

568
00:18:54,066 --> 00:18:56,011
and evidence for a reasonable

569
00:18:56,011 --> 00:18:57,049
investigation may include,

570
00:18:57,050 --> 00:18:58,940
but are not limited to,

571
00:18:58,940 --> 00:19:00,830
state and federal trademark records,

572
00:19:00,830 --> 00:19:01,650
Internet websites,

573
00:19:01,650 --> 00:19:04,930
and other media likely to or believed to

574
00:19:05,000 --> 00:19:07,849
be owned or controlled by the registrant.

575
00:19:07,850 --> 00:19:08,624
Internet websites,

576
00:19:08,624 --> 00:19:10,559
other online media and publications

577
00:19:10,559 --> 00:19:12,397
where the relevant goods and

578
00:19:12,397 --> 00:19:13,957
or services likely would be

579
00:19:13,957 --> 00:19:15,429
advertised or offered for sale.

580
00:19:15,430 --> 00:19:17,152
Print sources and web pages likely

581
00:19:17,152 --> 00:19:18,983
to contain reviews or discussion of

582
00:19:18,983 --> 00:19:20,867
the relevant goods and or services.

583
00:19:20,870 --> 00:19:22,532
Records of filings made with or

584
00:19:22,532 --> 00:19:24,471
of actions taken by any state

585
00:19:24,471 --> 00:19:26,015
or federal business registration

586
00:19:26,015 --> 00:19:27,173
or Regulatory agency.

587
00:19:31,280 --> 00:19:32,236
Additional sources.

588
00:19:32,236 --> 00:19:34,148
The registrant marketplace activities,

589
00:19:34,150 --> 00:19:35,170
including, for example,

590
00:19:35,170 --> 00:19:36,870
any attempts to contact the

591
00:19:36,870 --> 00:19:38,264
registrant or purchase the

592
00:19:38,264 --> 00:19:39,909
relevant goods and or services.

593
00:19:39,910 --> 00:19:41,650
Records of litigation or administrative

594
00:19:41,650 --> 00:19:43,042
proceedings reasonably likely to

595
00:19:43,042 --> 00:19:44,369
contain evidence bearing on the

596
00:19:44,369 --> 00:19:46,087
registrant's use or non use of the

597
00:19:46,087 --> 00:19:47,672
registered mark and, of course,

598
00:19:47,672 --> 00:19:49,276
any other reasonably accessible

599
00:19:49,276 --> 00:19:50,880
source with information establishing

600
00:19:50,940 --> 00:19:52,543
that the mark was never in use

601
00:19:52,543 --> 00:19:54,193
in commerce or was not in use

602
00:19:54,193 --> 00:19:55,561
in commerce as of the relevant

603
00:19:55,570 --> 00:19:57,516
date on or in connection with the

604
00:19:57,516 --> 00:19:59,050
relevant goods and or services.

605
00:20:02,680 --> 00:20:05,530
Now, the primary facie case.

606
00:20:05,530 --> 00:20:07,204
The director is the gatekeeper to

607
00:20:07,204 --> 00:20:08,999
the process and the director decides

608
00:20:08,999 --> 00:20:11,176
whether a prime aphasia case is made

609
00:20:11,176 --> 00:20:13,095
based on evidence and information in

610
00:20:13,095 --> 00:20:15,098
the petition and the USPTO's electronic

611
00:20:15,098 --> 00:20:17,338
record of the involved registration.

612
00:20:17,340 --> 00:20:19,628
Now the director also has the authority to

613
00:20:19,628 --> 00:20:21,850
institute a proceeding without a petition.

614
00:20:21,850 --> 00:20:23,460
If the director has evidence

615
00:20:23,460 --> 00:20:25,070
establishing a prima facie case.

616
00:20:25,070 --> 00:20:26,685
For example, the director could

617
00:20:26,685 --> 00:20:28,300
institute a proceeding on different

618
00:20:28,348 --> 00:20:30,166
goods and services in a registration

619
00:20:30,166 --> 00:20:32,107
that's already the subject of a

620
00:20:32,107 --> 00:20:33,118
petition initiated proceeding.

621
00:20:33,120 --> 00:20:33,990
Now, of course,

622
00:20:33,990 --> 00:20:36,020
the director can consolidate review of both

623
00:20:36,077 --> 00:20:37,947
proceedings on that same registration,

624
00:20:37,950 --> 00:20:39,575
so consolidated proceedings are related

625
00:20:39,575 --> 00:20:41,200
parallel proceedings that may include

626
00:20:41,243 --> 00:20:43,097
both expungement and re examination grounds,

627
00:20:43,100 --> 00:20:47,125
but it's the same registration at issue.

628
00:20:47,130 --> 00:20:49,566
A primer facie case requires only

629
00:20:49,566 --> 00:20:51,772
that a reasonable predicate concerning

630
00:20:51,772 --> 00:20:53,317
non USB established.

631
00:20:53,320 --> 00:20:55,637
If a primary feature case is established,

632
00:20:55,640 --> 00:20:58,210
the director must institute proceedings.

633
00:20:58,210 --> 00:20:59,845
And if proceedings are instituted

634
00:20:59,845 --> 00:21:01,153
just as an examination,

635
00:21:01,160 --> 00:21:03,288
the burden of proving non use by

636
00:21:03,288 --> 00:21:04,978
a preponderance of the evidence

637
00:21:04,978 --> 00:21:06,410
lies with the director.

638
00:21:08,870 --> 00:21:10,858
If a primer facie case is not

639
00:21:10,858 --> 00:21:12,720
established in the petition itself,

640
00:21:12,720 --> 00:21:14,325
the director will not institute

641
00:21:14,325 --> 00:21:15,288
petition based proceedings.

642
00:21:15,290 --> 00:21:17,264
The director will not add evidence to

643
00:21:17,264 --> 00:21:19,273
a deficient position to establish a

644
00:21:19,273 --> 00:21:20,749
Prime ification institute proceedings,

645
00:21:20,750 --> 00:21:23,350
but if the director has its own evidence

646
00:21:23,350 --> 00:21:24,918
that establishes a privacy case,

647
00:21:24,920 --> 00:21:27,355
the director could institute proceedings

648
00:21:27,355 --> 00:21:30,630
on his own initiative without a petition.

649
00:21:30,630 --> 00:21:31,826
Once proceedings are instituted

650
00:21:31,826 --> 00:21:33,620
and office action will issue the

651
00:21:33,669 --> 00:21:35,094
directs of registrant to respond

652
00:21:35,094 --> 00:21:36,777
within two months with proof of

653
00:21:36,777 --> 00:21:38,247
use of the mark on the challenge,

654
00:21:38,250 --> 00:21:40,209
goods or services.

655
00:21:40,210 --> 00:21:41,885
The director's decision to institute

656
00:21:41,885 --> 00:21:43,923
proceedings based on a prime aphasia

657
00:21:43,923 --> 00:21:45,735
case is final and non reviewable.

658
00:21:47,900 --> 00:21:49,874
Now the restaurant has two months

659
00:21:49,874 --> 00:21:52,153
to respond and the registrar is

660
00:21:52,153 --> 00:21:54,398
subject to the USPTO's rules

661
00:21:54,398 --> 00:21:55,745
on electronic correspondence.

662
00:21:55,750 --> 00:21:57,638
Domicile address and represent

663
00:21:57,638 --> 00:21:59,998
a representation by US council

664
00:21:59,998 --> 00:22:01,879
if foreign domiciled.

665
00:22:01,880 --> 00:22:04,124
The registrant really has three options

666
00:22:04,124 --> 00:22:06,999
for his or her response number one

667
00:22:06,999 --> 00:22:09,615
provide evidence of use #2 provide

668
00:22:09,615 --> 00:22:11,718
evidence of an excusable nonuse,

669
00:22:11,720 --> 00:22:13,958
and three deletion.

670
00:22:13,960 --> 00:22:15,740
Let's start with the 1st.

671
00:22:15,740 --> 00:22:16,715
Evidence of use.

672
00:22:16,715 --> 00:22:18,340
The registrant must provide such

673
00:22:18,340 --> 00:22:19,633
evidence of use, information,

674
00:22:19,633 --> 00:22:20,379
exhibits, affidavits,

675
00:22:20,379 --> 00:22:22,244
or declarations that may be

676
00:22:22,244 --> 00:22:23,964
necessary to rebut the prime

677
00:22:23,964 --> 00:22:25,504
aphasia case by establishing that

678
00:22:25,504 --> 00:22:27,246
the required use in commerce has

679
00:22:27,246 --> 00:22:28,854
been made honor in connection with

680
00:22:28,860 --> 00:22:31,278
the goods and services at issue

681
00:22:31,278 --> 00:22:33,859
as required by the Lanham Act.

682
00:22:33,860 --> 00:22:35,285
Any documentary evidence of use

683
00:22:35,285 --> 00:22:37,473
need not be specimens of use in the

684
00:22:37,473 --> 00:22:38,895
section one of the Act's sense,

685
00:22:38,900 --> 00:22:40,856
but must be consistent with the

686
00:22:40,856 --> 00:22:42,548
definition of use in commerce

687
00:22:42,548 --> 00:22:44,795
in section 45 of the Lanham Act.

688
00:22:44,800 --> 00:22:45,086
Now,

689
00:22:45,086 --> 00:22:46,230
specimens are typically what

690
00:22:46,230 --> 00:22:47,646
will be provided, we think,

691
00:22:47,646 --> 00:22:49,592
but there may be situations where the

692
00:22:49,592 --> 00:22:51,087
specimens are no longer available.

693
00:22:51,090 --> 00:22:51,846
In these cases,

694
00:22:51,846 --> 00:22:52,854
the registrant can provide

695
00:22:52,854 --> 00:22:54,011
additional evidence and explanations

696
00:22:54,011 --> 00:22:55,097
supported by declaration.

697
00:22:57,940 --> 00:22:59,320
Resubmitting the same specimens already

698
00:22:59,320 --> 00:23:01,012
contained in the USPTO records without

699
00:23:01,012 --> 00:23:02,352
additional evidence will likely be

700
00:23:02,352 --> 00:23:04,220
insufficient to rebut the prime aphasia case,

701
00:23:04,220 --> 00:23:06,230
you have to keep in mind that the office has

702
00:23:06,285 --> 00:23:08,019
already reviewed USPTO's records to determine

703
00:23:08,019 --> 00:23:10,229
whether or not to institute proceedings,

704
00:23:10,230 --> 00:23:12,729
so the specimens that are already in

705
00:23:12,729 --> 00:23:15,137
the record are not going to work.

706
00:23:15,140 --> 00:23:17,612
We've seen them testimonial evidence must

707
00:23:17,612 --> 00:23:20,788
be submitted, but should be supported

708
00:23:20,788 --> 00:23:23,136
by corroborating documentary evidence.

709
00:23:23,140 --> 00:23:24,886
For expungement the proof reviews must

710
00:23:24,886 --> 00:23:26,728
show that the use occurred before

711
00:23:26,728 --> 00:23:28,600
the filing date of the petition.

712
00:23:28,600 --> 00:23:29,979
For re examination the proof of use

713
00:23:29,979 --> 00:23:31,244
must show that the use occurred

714
00:23:31,244 --> 00:23:32,504
on or before the relevant date.

715
00:23:34,660 --> 00:23:36,700
Now the second bucket of acceptance

716
00:23:36,700 --> 00:23:38,520
of response is excusable nonuse,

717
00:23:38,520 --> 00:23:39,880
however, this is narrow.

718
00:23:39,880 --> 00:23:41,580
This only applies to section

719
00:23:41,580 --> 00:23:43,078
44 or 66 registrants.

720
00:23:43,080 --> 00:23:46,426
In the context of an expungement proceeding.

721
00:23:46,430 --> 00:23:48,170
Excusable Nonuse is a treaty entitlement

722
00:23:48,170 --> 00:23:49,950
for Paris and Madrid registrants,

723
00:23:49,950 --> 00:23:51,870
and it does not apply to

724
00:23:51,870 --> 00:23:52,830
Section 1 registrants.

725
00:23:52,830 --> 00:23:54,648
It only applies in expungement because

726
00:23:54,648 --> 00:23:56,882
section 44 and 66 registrants did not

727
00:23:56,882 --> 00:23:58,802
have to establish use in examination

728
00:23:58,802 --> 00:24:00,476
as a condition for registration

729
00:24:00,476 --> 00:24:02,101
that would now be questioned

730
00:24:02,101 --> 00:24:04,071
in a reexamination proceeding,

731
00:24:04,071 --> 00:24:06,806
so it's just not applicable.

732
00:24:06,810 --> 00:24:09,106
OK, so that third bucket of deletion right?

733
00:24:09,110 --> 00:24:11,322
Registrant may delete some or all of

734
00:24:11,322 --> 00:24:13,661
the challenge goods and services and his

735
00:24:13,661 --> 00:24:15,659
or her response with immediate effect.

736
00:24:15,660 --> 00:24:17,795
A registrant may not amend an identification

737
00:24:17,795 --> 00:24:19,850
in the context of these proceedings,

738
00:24:19,850 --> 00:24:20,168
though,

739
00:24:20,168 --> 00:24:22,076
and we received a question of

740
00:24:22,076 --> 00:24:24,030
about this at the last round.

741
00:24:24,030 --> 00:24:25,720
Table whether any regulatory allowances

742
00:24:25,720 --> 00:24:28,098
would be made for registrants in the

743
00:24:28,098 --> 00:24:29,052
expungement reexamination proceeding

744
00:24:29,052 --> 00:24:30,998
who are affected by a mistake

745
00:24:30,998 --> 00:24:32,493
made by counsel in identifying

746
00:24:32,493 --> 00:24:34,152
the original goods and services.

747
00:24:34,152 --> 00:24:37,848
So a fact pattern that that explains this.

748
00:24:37,850 --> 00:24:39,914
If the proof of use does not match

749
00:24:39,914 --> 00:24:41,380
the identification of the goods

750
00:24:41,380 --> 00:24:42,576
and services being challenged,

751
00:24:42,580 --> 00:24:44,434
maybe this was because the applicant

752
00:24:44,434 --> 00:24:46,334
initially made a mistake in identifying

753
00:24:46,334 --> 00:24:48,158
the goods and services in his

754
00:24:48,158 --> 00:24:50,089
application and never fixed that mistake.

755
00:24:50,090 --> 00:24:52,106
Now the register on in the context

756
00:24:52,106 --> 00:24:54,196
of this proceeding may not amend the

757
00:24:54,196 --> 00:24:56,230
identification to match the proof of use.

758
00:24:56,230 --> 00:24:58,365
However, there is a way around this.

759
00:24:58,370 --> 00:25:00,260
The registrant could file a section

760
00:25:00,260 --> 00:25:02,349
seven amendment to narrow the ID within

761
00:25:02,349 --> 00:25:04,155
the scope of the original and notify

762
00:25:04,212 --> 00:25:06,522
that amendment to the expungement or re

763
00:25:06,522 --> 00:25:07,868
examination examiner for consideration.

764
00:25:07,868 --> 00:25:09,956
If the registrant did not do

765
00:25:09,956 --> 00:25:12,079
so prior to the proceedings.

766
00:25:12,080 --> 00:25:14,166
Keep in mind that we cannot guarantee

767
00:25:14,166 --> 00:25:16,015
the section #7 amendment would be

768
00:25:16,015 --> 00:25:18,574
accepted and also keep in mind we would

769
00:25:18,574 --> 00:25:20,629
not actually suspend the examination.

770
00:25:20,630 --> 00:25:22,280
The expungement or reexamination proceedings.

771
00:25:22,280 --> 00:25:24,408
But we would try to expedite consideration

772
00:25:24,408 --> 00:25:26,230
of the section seven amendment.

773
00:25:28,430 --> 00:25:30,905
Now, if the Registrant's response

774
00:25:30,905 --> 00:25:33,896
proposes deletion but the timing of

775
00:25:33,896 --> 00:25:36,506
this deletion occurs when the same

776
00:25:36,506 --> 00:25:39,129
registration is also in the middle

777
00:25:39,129 --> 00:25:41,194
of a post registration examination

778
00:25:41,194 --> 00:25:45,240
of the Section 8 or 71 declaration.

779
00:25:45,240 --> 00:25:47,020
If that deletion happens at,

780
00:25:47,020 --> 00:25:49,323
this happens to happen at the same

781
00:25:49,323 --> 00:25:51,379
time the post registration and

782
00:25:51,379 --> 00:25:53,874
examination deletion fee kicks in.

783
00:25:53,880 --> 00:25:56,808
The deletion fee of $250 per

784
00:25:56,808 --> 00:25:58,760
class will be due.

785
00:25:58,760 --> 00:25:59,741
If you recall,

786
00:25:59,741 --> 00:26:01,703
in January 2021 we we implemented

787
00:26:01,703 --> 00:26:03,952
a deletion fee if the goods or

788
00:26:03,952 --> 00:26:06,611
services had to be deleted in a in

789
00:26:06,611 --> 00:26:07,971
a post registration examination

790
00:26:07,971 --> 00:26:09,821
or a post registration audit,

791
00:26:09,821 --> 00:26:12,143
and we don't want the expungement

792
00:26:12,143 --> 00:26:13,628
reexaminations preceding deletion to be

793
00:26:13,628 --> 00:26:16,250
a way to get around that $250 deletion fees.

794
00:26:16,250 --> 00:26:19,810
So if they happen at the same time

795
00:26:19,810 --> 00:26:22,280
that deletion fee is still do.

796
00:26:22,280 --> 00:26:24,170
Now I want to note specifically here

797
00:26:24,170 --> 00:26:26,241
that we are not proposing to charge

798
00:26:26,241 --> 00:26:29,105
a deletion fee in the context of the

799
00:26:29,105 --> 00:26:30,626
expungement reexamination proceedings.

800
00:26:32,930 --> 00:26:34,580
Because we want to incentivize

801
00:26:34,580 --> 00:26:37,252
deletion in this context and and in in

802
00:26:37,252 --> 00:26:39,166
the sense that it post registration

803
00:26:39,166 --> 00:26:40,389
maintenance examination is.

804
00:26:40,390 --> 00:26:42,982
This is a separate different proceeding

805
00:26:42,982 --> 00:26:45,960
than than one we're looking at here.

806
00:26:45,960 --> 00:26:47,610
So in this context, generally we're

807
00:26:47,610 --> 00:26:49,390
not charging that fee deliberately.

808
00:26:49,390 --> 00:26:52,459
So, but let us know if you think we

809
00:26:52,459 --> 00:26:55,329
should enter in your formal comments.

810
00:26:55,330 --> 00:26:56,835
Now the registrant can delete

811
00:26:56,835 --> 00:26:58,039
goods in the response,

812
00:26:58,040 --> 00:26:59,916
but they could also delete goods and

813
00:26:59,916 --> 00:27:01,950
services through a section seven amendment.

814
00:27:01,950 --> 00:27:03,756
We need to know about that.

815
00:27:03,760 --> 00:27:05,560
The section Seven amendment must be

816
00:27:05,560 --> 00:27:07,702
notified by the registrar in your response

817
00:27:07,702 --> 00:27:09,472
to the expungement or re examination.

818
00:27:09,480 --> 00:27:11,720
And the same thing is true with a

819
00:27:11,720 --> 00:27:13,389
voluntary surrender of the registration.

820
00:27:13,390 --> 00:27:15,798
You can do that as a separate proceeding,

821
00:27:15,800 --> 00:27:17,408
but it has to be notified

822
00:27:17,408 --> 00:27:19,110
to us through the response.

823
00:27:19,110 --> 00:27:21,414
Now, if any one of these responses happens

824
00:27:21,414 --> 00:27:23,927
and it we consider it to be acceptable,

825
00:27:23,930 --> 00:27:25,542
the proceedings will terminate.

826
00:27:25,542 --> 00:27:28,380
Early and no cancellation order will issue.

827
00:27:32,640 --> 00:27:35,020
Now, if the registrant's response is either

828
00:27:35,020 --> 00:27:37,739
a non response or an unacceptable response,

829
00:27:37,740 --> 00:27:40,644
that's what we're going to look at here.

830
00:27:40,650 --> 00:27:42,805
No response results in immediate

831
00:27:42,805 --> 00:27:45,502
cancellation for the goods and services

832
00:27:45,502 --> 00:27:48,316
on which the proceeding was instituted.

833
00:27:48,320 --> 00:27:50,318
Now a petition for reinstatement is

834
00:27:50,318 --> 00:27:52,505
available if the failure to respond

835
00:27:52,505 --> 00:27:54,490
was due to extraordinary circumstances.

836
00:27:54,490 --> 00:27:57,148
The typical time periods for filing

837
00:27:57,148 --> 00:27:59,440
those sorts of petitions apply.

838
00:27:59,440 --> 00:28:01,407
Now of course the the response to

839
00:28:01,407 --> 00:28:02,876
the outstanding office action will

840
00:28:02,876 --> 00:28:04,592
also be required along with that

841
00:28:04,592 --> 00:28:05,620
petition and the fee.

842
00:28:05,620 --> 00:28:07,552
We don't want this process to be

843
00:28:07,552 --> 00:28:09,390
used to prolong the registrant's

844
00:28:09,390 --> 00:28:10,806
overall response period.

845
00:28:10,810 --> 00:28:11,336
And remember,

846
00:28:11,336 --> 00:28:13,177
it may bears notice that the NPRM

847
00:28:13,177 --> 00:28:14,743
adjust the due diligence monitoring

848
00:28:14,743 --> 00:28:16,615
rule such that the registrants must

849
00:28:16,668 --> 00:28:18,336
monitor the status of the registration

850
00:28:18,336 --> 00:28:20,311
at least every two months after in

851
00:28:20,311 --> 00:28:21,746
notice of institution of proceedings.

852
00:28:21,750 --> 00:28:23,549
So you've got to be alert once

853
00:28:23,549 --> 00:28:24,920
these proceedings are instituted,

854
00:28:24,920 --> 00:28:27,098
you have a due diligence requirement

855
00:28:27,098 --> 00:28:29,080
to check every two months.

856
00:28:29,080 --> 00:28:31,185
If the response is unacceptable

857
00:28:31,185 --> 00:28:32,448
or it's incomplete,

858
00:28:32,450 --> 00:28:35,060
a final action issues with

859
00:28:35,060 --> 00:28:37,670
a 2 month response period.

860
00:28:37,670 --> 00:28:39,290
We actually are asking for comments

861
00:28:39,290 --> 00:28:41,163
in the NPRM on whether we should

862
00:28:41,163 --> 00:28:43,267
issue a 30 day letter for a timely

863
00:28:43,267 --> 00:28:44,631
bona fide attempted response

864
00:28:44,631 --> 00:28:46,336
to the First Office action,

865
00:28:46,340 --> 00:28:47,780
but which omits some small

866
00:28:47,780 --> 00:28:48,644
matter of compliance.

867
00:28:50,930 --> 00:28:53,171
I wanted to go back to the issue of

868
00:28:53,171 --> 00:28:54,860
deletions, though that the third bucket

869
00:28:54,860 --> 00:28:57,266
and flag two issues that I'd love for you

870
00:28:57,266 --> 00:28:59,559
all to comment on in your formal comments.

871
00:28:59,560 --> 00:29:02,158
The MPR specifically request comments on

872
00:29:02,158 --> 00:29:05,018
whether a registrant who fails to respond

873
00:29:05,018 --> 00:29:07,976
to the office action should have his or

874
00:29:07,976 --> 00:29:10,484
her registration flagged for later audit.

875
00:29:10,490 --> 00:29:12,332
This means from a best practices

876
00:29:12,332 --> 00:29:13,902
perspective not responding to the

877
00:29:13,902 --> 00:29:15,624
office action and allowing a deletion

878
00:29:15,624 --> 00:29:16,970
to occur without affirmatively

879
00:29:16,970 --> 00:29:19,115
responding and deleting the challenge,

880
00:29:19,120 --> 00:29:21,430
goods and services would no

881
00:29:21,430 --> 00:29:23,278
longer be an option.

882
00:29:23,280 --> 00:29:24,834
Our thought in asking for comments

883
00:29:24,834 --> 00:29:26,979
about an audit is that a registrar who

884
00:29:26,979 --> 00:29:28,922
simply does not respond may have bigger

885
00:29:28,922 --> 00:29:30,758
problems in his or her registration,

886
00:29:30,760 --> 00:29:32,416
for which evidence of non use

887
00:29:32,416 --> 00:29:33,244
was not available.

888
00:29:33,250 --> 00:29:35,098
But in fact the mark was not in

889
00:29:35,098 --> 00:29:36,888
use for additional goods and

890
00:29:36,888 --> 00:29:38,580
services in the registration.

891
00:29:38,580 --> 00:29:40,748
So if we target it for later audit,

892
00:29:40,750 --> 00:29:42,726
we can find out if the rest of

893
00:29:42,726 --> 00:29:44,148
the registration that was not

894
00:29:44,148 --> 00:29:45,900
challenged in the proceeding hold up.

895
00:29:45,900 --> 00:29:46,988
Under further scrutiny scrutiny.

896
00:29:46,988 --> 00:29:49,262
But we are aware that such a policy

897
00:29:49,262 --> 00:29:51,032
could raise another issue for foreign

898
00:29:51,032 --> 00:29:52,614
domiciliaries who may not wish to

899
00:29:52,614 --> 00:29:54,024
respond to an office action because

900
00:29:54,030 --> 00:29:56,469
they don't want to have to get you as

901
00:29:56,469 --> 00:29:58,857
Council in order to affirmatively respond.

902
00:29:58,860 --> 00:30:00,498
They might prefer to to let the

903
00:30:00,498 --> 00:30:02,118
challenge goods and services fall away,

904
00:30:02,120 --> 00:30:03,639
and they might not want to hire

905
00:30:03,639 --> 00:30:05,188
an attorney to make that deletion

906
00:30:05,188 --> 00:30:06,603
or to surrender the registration

907
00:30:06,603 --> 00:30:08,400
in order to avoid the later audit.

908
00:30:08,400 --> 00:30:09,900
But maybe on the other hand,

909
00:30:09,900 --> 00:30:12,980
that's not something we would.

910
00:30:12,980 --> 00:30:15,581
Like to consider it so we kind of would

911
00:30:15,581 --> 00:30:18,237
like to have some comments to determine.

912
00:30:18,240 --> 00:30:20,736
Is there a way for a foreign domicile

913
00:30:20,736 --> 00:30:22,624
registrants to be able to respond

914
00:30:22,624 --> 00:30:24,424
to the office action and simply

915
00:30:24,488 --> 00:30:26,468
delete without having US Council?

916
00:30:26,470 --> 00:30:28,606
Or does that create a disincentive

917
00:30:28,606 --> 00:30:30,796
for foreign registrations to use the

918
00:30:30,796 --> 00:30:32,902
existing no cost mechanisms to keep

919
00:30:32,902 --> 00:30:35,017
their registration up to date all the time?

920
00:30:35,020 --> 00:30:37,972
So we would love your input on that piece.

921
00:30:42,330 --> 00:30:44,815
Now the response to the final action.

922
00:30:44,820 --> 00:30:46,934
The final action will include the examiners

923
00:30:46,934 --> 00:30:49,090
decision in an expungement proceeding,

924
00:30:49,090 --> 00:30:51,310
that the registration should be cancelled

925
00:30:51,310 --> 00:30:53,876
for each goods or service for which

926
00:30:53,876 --> 00:30:56,249
the mark is determined to have never

927
00:30:56,315 --> 00:30:58,730
been used in commerce or for which

928
00:30:58,730 --> 00:31:00,502
excusable nonuse was not established,

929
00:31:00,502 --> 00:31:02,698
or for non compliance with any

930
00:31:02,698 --> 00:31:04,049
requirement under Rule 2.11,

931
00:31:04,050 --> 00:31:05,958
US Council ruled 2.23 failure to

932
00:31:05,958 --> 00:31:08,103
provide an email address for electronic

933
00:31:08,103 --> 00:31:09,739
correspondence or rule 2.189.

934
00:31:09,740 --> 00:31:13,430
Failure to provide a domicile address.

935
00:31:13,430 --> 00:31:15,115
The final action for reexamination

936
00:31:15,115 --> 00:31:16,463
proceeding would include the

937
00:31:16,463 --> 00:31:17,942
examiner's decision to cancel the

938
00:31:17,942 --> 00:31:19,580
registration for each good or service

939
00:31:19,632 --> 00:31:21,048
for which the mark was not in use

940
00:31:21,048 --> 00:31:22,738
on or before the relevant date,

941
00:31:22,738 --> 00:31:24,730
or for non compliance with the

942
00:31:24,790 --> 00:31:26,450
same rules I just mentioned.

943
00:31:26,450 --> 00:31:28,538
The Registrar must respond to the

944
00:31:28,538 --> 00:31:30,835
final action with a request for

945
00:31:30,835 --> 00:31:33,343
reconsideration and a notice of appeal.

946
00:31:33,350 --> 00:31:34,982
Now, if there is no response

947
00:31:34,982 --> 00:31:36,070
to the final action,

948
00:31:36,070 --> 00:31:37,358
USPTO will terminate proceedings

949
00:31:37,358 --> 00:31:39,290
and order cancellation of the goods

950
00:31:39,339 --> 00:31:40,949
and services that were challenged.

951
00:31:40,950 --> 00:31:41,262
Again,

952
00:31:41,262 --> 00:31:43,134
a petition for reinstatement is available,

953
00:31:43,140 --> 00:31:46,428
but only for an extraordinary situation.

954
00:31:46,430 --> 00:31:48,452
Keep in mind if the request

955
00:31:48,452 --> 00:31:49,463
for reconsideration contains

956
00:31:49,463 --> 00:31:50,509
acceptable proof of use,

957
00:31:50,510 --> 00:31:52,080
we will terminate proceedings and

958
00:31:52,080 --> 00:31:53,650
no cancellation order will issue,

959
00:31:53,650 --> 00:31:54,284
but otherwise,

960
00:31:54,284 --> 00:31:55,869
the examiner's decision to cancel

961
00:31:55,869 --> 00:31:57,732
will then go to the trademark

962
00:31:57,732 --> 00:31:59,448
trial and appeal board and the

963
00:31:59,448 --> 00:32:01,190
regular board timelines will apply.

964
00:32:05,910 --> 00:32:08,822
Goods and services for which use in

965
00:32:08,822 --> 00:32:11,410
commerce has already been established.

966
00:32:11,410 --> 00:32:13,276
May not be subject to further

967
00:32:13,276 --> 00:32:14,520
expungement or reexamination proceedings.

968
00:32:14,520 --> 00:32:15,813
These are the.

969
00:32:15,813 --> 00:32:19,250
This is the estoppel provision in the act.

970
00:32:19,250 --> 00:32:20,442
But keep in mind,

971
00:32:20,442 --> 00:32:22,230
this estoppel provision does not apply

972
00:32:22,292 --> 00:32:24,000
to subsequent board proceedings.

973
00:32:24,000 --> 00:32:25,148
So in other words,

974
00:32:25,148 --> 00:32:26,870
even if the registration is subject

975
00:32:26,927 --> 00:32:28,877
to an expungement or reexamination

976
00:32:28,877 --> 00:32:30,437
proceeding before the director,

977
00:32:30,440 --> 00:32:32,426
that registration may still be challenged

978
00:32:32,426 --> 00:32:35,177
at the TTAB on a claim of expungement,

979
00:32:35,180 --> 00:32:37,220
abandonment or non use is appropriate.

980
00:32:39,900 --> 00:32:41,560
So As for pending proceedings,

981
00:32:41,560 --> 00:32:42,816
we cannot institute expungement

982
00:32:42,816 --> 00:32:45,200
proceedings on the same goods or services.

983
00:32:45,200 --> 00:32:47,048
If an expungement proceeding on those

984
00:32:47,048 --> 00:32:49,170
goods and services is already pending,

985
00:32:49,170 --> 00:32:50,825
we can't just keep loading

986
00:32:50,825 --> 00:32:52,480
up on the same registration.

987
00:32:52,480 --> 00:32:54,574
Likewise, we will not institute an

988
00:32:54,574 --> 00:32:56,332
expungement or reexamination proceeding if

989
00:32:56,332 --> 00:32:57,867
every examination proceeding is already

990
00:32:57,867 --> 00:32:59,759
pending on those goods and services.

991
00:32:59,760 --> 00:33:02,256
We will deny the later filed petition unless

992
00:33:02,256 --> 00:33:04,728
it covers goods and services not already.

993
00:33:04,730 --> 00:33:06,710
The subject of an instituted proceedings.

994
00:33:11,970 --> 00:33:13,416
We have proposed to amend the

995
00:33:13,416 --> 00:33:15,157
rules that so that expungement in

996
00:33:15,157 --> 00:33:16,605
reexamination proceedings are included

997
00:33:16,605 --> 00:33:18,706
among the types of proceedings for

998
00:33:18,706 --> 00:33:20,512
which its suspension of action by

999
00:33:20,512 --> 00:33:22,650
the office or the TTB is authorized.

1000
00:33:25,960 --> 00:33:27,556
We are also proposing to amend

1001
00:33:27,556 --> 00:33:29,552
the rules to reflect our current

1002
00:33:29,552 --> 00:33:30,866
suspension practice generally.

1003
00:33:30,870 --> 00:33:32,865
The TTAB will suspend proceedings

1004
00:33:32,865 --> 00:33:34,860
when another proceeding that is

1005
00:33:34,922 --> 00:33:36,466
relevant to the registrability

1006
00:33:36,466 --> 00:33:38,782
of the involved mark is ongoing.

1007
00:33:38,790 --> 00:33:40,632
However, the rule is currently written

1008
00:33:40,632 --> 00:33:42,206
such that the suspension practice

1009
00:33:42,206 --> 00:33:43,988
is limited to proceedings where the

1010
00:33:43,988 --> 00:33:45,788
exact same party or parties are

1011
00:33:45,788 --> 00:33:47,218
engaged in the other proceeding.

1012
00:33:47,220 --> 00:33:49,212
So we are proposing to amend the rule

1013
00:33:49,212 --> 00:33:50,923
to reflect our actual practice and

1014
00:33:50,923 --> 00:33:53,073
whereby we look at the relevance of

1015
00:33:53,073 --> 00:33:54,833
the proceeding to the registrability

1016
00:33:54,833 --> 00:33:56,550
the registration rather than looking

1017
00:33:56,550 --> 00:33:58,050
to the identities of parties.

1018
00:34:01,500 --> 00:34:03,551
Now here is a visual for those

1019
00:34:03,551 --> 00:34:05,580
of you who think visually.

1020
00:34:05,580 --> 00:34:07,884
This is an overview of the

1021
00:34:07,884 --> 00:34:09,036
expungement and reexamination

1022
00:34:09,036 --> 00:34:10,608
proceedings before the director.

1023
00:34:10,610 --> 00:34:12,446
And these slides will be posted

1024
00:34:12,446 --> 00:34:14,019
or they actually they already

1025
00:34:14,019 --> 00:34:15,717
are posted on our website so

1026
00:34:15,717 --> 00:34:17,440
you can take a closer look.

1027
00:34:17,440 --> 00:34:19,090
But let's walk through this simplified

1028
00:34:19,090 --> 00:34:20,880
version so the process begins with

1029
00:34:20,880 --> 00:34:22,490
the petition against the registration.

1030
00:34:22,490 --> 00:34:23,980
It goes to the examiner.

1031
00:34:23,980 --> 00:34:26,110
There are two possible outcomes.

1032
00:34:26,110 --> 00:34:27,244
An institution decision.

1033
00:34:27,244 --> 00:34:29,512
This would also be combined with

1034
00:34:29,512 --> 00:34:31,632
the First Office action with the

1035
00:34:31,632 --> 00:34:33,990
other option is denial to institute.

1036
00:34:36,020 --> 00:34:39,469
Now the next the examiner, let's say the

1037
00:34:39,469 --> 00:34:42,667
registrant has two months to respond.

1038
00:34:42,670 --> 00:34:44,740
Any examiner reviews the response?

1039
00:34:46,790 --> 00:34:48,790
The registrant could have either

1040
00:34:48,790 --> 00:34:50,790
submitted an acceptable response or

1041
00:34:50,851 --> 00:34:53,323
an unacceptable response or or doesn't

1042
00:34:53,323 --> 00:34:54,971
respond and acceptable response

1043
00:34:55,030 --> 00:34:57,090
moves was forward and unacceptable,

1044
00:34:57,090 --> 00:34:59,202
and I'm sorry an acceptable response

1045
00:34:59,202 --> 00:35:01,190
means termination of the proceedings

1046
00:35:01,190 --> 00:35:03,266
immediately with no cancellation.

1047
00:35:03,270 --> 00:35:05,838
Unacceptable response moves to the examiner

1048
00:35:05,838 --> 00:35:08,630
and issue who issues a final action.

1049
00:35:08,630 --> 00:35:09,754
No response.

1050
00:35:09,754 --> 00:35:12,564
It results in immediate cancellation.

1051
00:35:12,570 --> 00:35:14,726
Of of the goods and services on

1052
00:35:14,726 --> 00:35:16,609
which the proceeding was instituted,

1053
00:35:16,610 --> 00:35:18,969
not the entire registration or the entire

1054
00:35:18,969 --> 00:35:21,326
class, just the ones that were attacked,

1055
00:35:21,330 --> 00:35:24,306
and upon which proceedings were instituted.

1056
00:35:24,310 --> 00:35:27,005
Now the examiner can, like I said,

1057
00:35:27,010 --> 00:35:29,054
terminate the preceding issue.

1058
00:35:29,054 --> 00:35:31,609
A final action or cancel.

1059
00:35:31,610 --> 00:35:33,520
Goes back to the registrant.

1060
00:35:33,520 --> 00:35:36,180
The registrant has two months to respond.

1061
00:35:36,180 --> 00:35:38,612
They can file he or she can file

1062
00:35:38,612 --> 00:35:40,749
a request for reconsideration,

1063
00:35:40,750 --> 00:35:41,995
providing additional evidence.

1064
00:35:41,995 --> 00:35:45,308
He can file also a notice of appeal

1065
00:35:45,308 --> 00:35:46,656
at the same time.

1066
00:35:46,660 --> 00:35:48,977
Or he could not respond at all.

1067
00:35:48,980 --> 00:35:50,804
A non response again will be

1068
00:35:50,804 --> 00:35:52,020
tagged for later audit,

1069
00:35:52,020 --> 00:35:53,798
but the goods and services that were

1070
00:35:53,798 --> 00:35:55,669
attacked will be immediately cancelled.

1071
00:35:58,090 --> 00:36:00,134
The Examiner refused the

1072
00:36:00,134 --> 00:36:01,667
request for reconsideration.

1073
00:36:01,670 --> 00:36:03,540
If the examiner decides that

1074
00:36:03,540 --> 00:36:05,410
the the the evidence submitted

1075
00:36:05,482 --> 00:36:07,069
is accessible acceptable,

1076
00:36:07,070 --> 00:36:09,140
the proceedings will immediately terminate.

1077
00:36:09,140 --> 00:36:12,443
If not, then it goes to the board where

1078
00:36:12,443 --> 00:36:15,370
the board will review the appeal.

1079
00:36:19,870 --> 00:36:23,458
Now we're going to move on.

1080
00:36:23,460 --> 00:36:26,036
To some other features in the NPRM,

1081
00:36:26,040 --> 00:36:28,260
not strictly driven by the TMI,

1082
00:36:28,260 --> 00:36:30,353
but they are driven by our need

1083
00:36:30,353 --> 00:36:32,320
to have clear correspondence,

1084
00:36:32,320 --> 00:36:34,488
rules and implement provisions

1085
00:36:34,488 --> 00:36:37,198
of our database login project.

1086
00:36:37,200 --> 00:36:38,820
Now overall, when you look at

1087
00:36:38,820 --> 00:36:40,470
these rules in the Imperium,

1088
00:36:40,470 --> 00:36:42,437
I want you to notice that we're

1089
00:36:42,437 --> 00:36:44,524
moving away from using the term

1090
00:36:44,524 --> 00:36:46,499
representation to the term recognition.

1091
00:36:46,500 --> 00:36:48,336
We recognize here that they represent

1092
00:36:48,336 --> 00:36:49,965
representatives for the we recognize

1093
00:36:49,965 --> 00:36:51,735
representatives for the purpose of

1094
00:36:51,735 --> 00:36:53,716
determining who is authorized to act

1095
00:36:53,716 --> 00:36:55,258
for the applicant to the registrant.

1096
00:36:55,260 --> 00:36:57,162
We do not control the actual

1097
00:36:57,162 --> 00:36:58,113
representation agreement between

1098
00:36:58,113 --> 00:36:59,647
the attorney and the client,

1099
00:36:59,650 --> 00:37:01,426
and we want to make sure

1100
00:37:01,426 --> 00:37:03,090
that's clear in our rules.

1101
00:37:03,090 --> 00:37:04,992
So we're we're changing the wording

1102
00:37:04,992 --> 00:37:06,530
to reflect that reality now.

1103
00:37:06,530 --> 00:37:08,095
As for the substantive change

1104
00:37:08,095 --> 00:37:09,660
here under our current rules,

1105
00:37:09,660 --> 00:37:11,280
recognition ends when an

1106
00:37:11,280 --> 00:37:12,495
application is abandoned.

1107
00:37:12,500 --> 00:37:14,875
A registration expires or is

1108
00:37:14,875 --> 00:37:16,775
cancelled or changes owners.

1109
00:37:16,780 --> 00:37:18,676
Under the proposed rules,

1110
00:37:18,676 --> 00:37:20,572
recognition would instead continue

1111
00:37:20,572 --> 00:37:22,678
after all of these events.

1112
00:37:22,680 --> 00:37:25,264
So that means that in order to end

1113
00:37:25,264 --> 00:37:27,046
the recognition of the attorney

1114
00:37:27,046 --> 00:37:29,176
by the USPTO owners and attorneys

1115
00:37:29,176 --> 00:37:31,441
would be required to proactively

1116
00:37:31,441 --> 00:37:33,736
file an appropriate revocation or

1117
00:37:33,736 --> 00:37:36,080
withdrawal document rather than the

1118
00:37:36,080 --> 00:37:37,960
current situation where recognition

1119
00:37:37,960 --> 00:37:40,038
automatically ends at certain events.

1120
00:37:40,040 --> 00:37:41,979
Now we want to make this rule

1121
00:37:41,979 --> 00:37:43,680
change to match our practice.

1122
00:37:43,680 --> 00:37:45,654
The background this for this change

1123
00:37:45,654 --> 00:37:47,340
relies on our correspondence rules.

1124
00:37:47,340 --> 00:37:49,398
Now the USPTO is supposed to correspond

1125
00:37:49,398 --> 00:37:51,670
only with the applicant or registrant.

1126
00:37:51,670 --> 00:37:54,022
If the applicant or registrant is

1127
00:37:54,022 --> 00:37:56,310
not represented by an attorney.

1128
00:37:56,310 --> 00:37:58,422
So if recognition has ended after

1129
00:37:58,422 --> 00:38:00,389
these those events that I named,

1130
00:38:00,390 --> 00:38:02,090
we should stop sending correspondence

1131
00:38:02,090 --> 00:38:03,790
to the attorneys correspondence address.

1132
00:38:03,790 --> 00:38:04,660
But we don't.

1133
00:38:04,660 --> 00:38:06,110
Stakeholders told us not to

1134
00:38:06,110 --> 00:38:07,870
follow our correspondence rule,

1135
00:38:07,870 --> 00:38:09,226
attorney stakeholders in particular

1136
00:38:09,226 --> 00:38:11,260
told us they wanted to continue

1137
00:38:11,316 --> 00:38:12,572
receiving correspondence so that

1138
00:38:12,572 --> 00:38:14,456
they could know when the post

1139
00:38:14,510 --> 00:38:16,030
registration filings were due,

1140
00:38:16,030 --> 00:38:16,756
for example,

1141
00:38:16,756 --> 00:38:19,297
and so we want to amend our

1142
00:38:19,297 --> 00:38:21,689
rule to reflect our practice.

1143
00:38:21,690 --> 00:38:23,940
Now the other part of this

1144
00:38:23,940 --> 00:38:25,440
situation is the rule.

1145
00:38:25,440 --> 00:38:27,585
This rule change will actually

1146
00:38:27,585 --> 00:38:29,301
facilitate implementation of the

1147
00:38:29,301 --> 00:38:31,643
role based access control system

1148
00:38:31,643 --> 00:38:33,487
for applications and registrations

1149
00:38:33,487 --> 00:38:35,799
that we're right now developing.

1150
00:38:35,800 --> 00:38:37,372
So if you recall,

1151
00:38:37,372 --> 00:38:39,337
we implemented our database login

1152
00:38:39,337 --> 00:38:41,203
project phase one where to in

1153
00:38:41,203 --> 00:38:43,387
order to file any TS forms you

1154
00:38:43,387 --> 00:38:45,535
have to have a uspto.gov account.

1155
00:38:45,540 --> 00:38:47,628
We have two more phases coming.

1156
00:38:47,630 --> 00:38:50,192
The second phase is an identity

1157
00:38:50,192 --> 00:38:52,370
verification process for database login.

1158
00:38:52,370 --> 00:38:54,512
And then after that we've got

1159
00:38:54,512 --> 00:38:55,583
role based authorization.

1160
00:38:55,590 --> 00:38:57,970
So in this situation users are going

1161
00:38:57,970 --> 00:39:00,065
to be assigned a limited number

1162
00:39:00,065 --> 00:39:02,403
of roles so that they can control

1163
00:39:02,469 --> 00:39:04,539
and delegate access to filings,

1164
00:39:04,540 --> 00:39:06,688
and this would be, you know,

1165
00:39:06,690 --> 00:39:07,622
Attorney Attorney,

1166
00:39:07,622 --> 00:39:10,418
support owner and public administrator roles.

1167
00:39:10,420 --> 00:39:12,094
And only those people would be

1168
00:39:12,094 --> 00:39:13,520
authorized to touch the file,

1169
00:39:13,520 --> 00:39:15,245
and this will definitely cut

1170
00:39:15,245 --> 00:39:16,970
down on any unauthorized changes

1171
00:39:17,027 --> 00:39:18,777
of correspondence and the like.

1172
00:39:18,780 --> 00:39:20,410
So under our current rule,

1173
00:39:20,410 --> 00:39:22,566
if we were to retain that rule

1174
00:39:22,566 --> 00:39:23,490
in order to

1175
00:39:23,566 --> 00:39:24,958
submit the TS form,

1176
00:39:24,960 --> 00:39:27,711
say for example to file a maintenance

1177
00:39:27,711 --> 00:39:29,810
document on behalf of a client.

1178
00:39:29,810 --> 00:39:32,336
The role based access controls would

1179
00:39:32,336 --> 00:39:34,558
require the no longer recognized

1180
00:39:34,558 --> 00:39:37,306
attorney to 1st request it permission

1181
00:39:37,306 --> 00:39:39,990
from the owner in order to file.

1182
00:39:39,990 --> 00:39:41,958
And we're concerned about miss deadlines.

1183
00:39:41,960 --> 00:39:44,249
That creates a lag in in timing,

1184
00:39:44,250 --> 00:39:46,874
and we know that that could be dangerous,

1185
00:39:46,880 --> 00:39:49,000
so we want to fix the rules to

1186
00:39:49,000 --> 00:39:51,517
match our practice and allow us to

1187
00:39:51,517 --> 00:39:53,437
assign roles for access controls.

1188
00:39:59,420 --> 00:40:01,496
We're also proposing a rule change

1189
00:40:01,496 --> 00:40:03,339
to clarify attorney obligations when

1190
00:40:03,339 --> 00:40:04,955
withdrawing from representation and

1191
00:40:04,955 --> 00:40:06,975
differentiate the grounds upon which

1192
00:40:07,027 --> 00:40:09,103
an attorney may request a withdrawal

1193
00:40:09,103 --> 00:40:11,224
versus those situations where an attorney

1194
00:40:11,224 --> 00:40:13,059
must request withdrawal and there

1195
00:40:13,059 --> 00:40:15,288
really should be no surprises here.

1196
00:40:15,290 --> 00:40:17,834
This will allow us to be consistent with

1197
00:40:17,834 --> 00:40:20,447
the USPTO rules of professional conduct.

1198
00:40:22,690 --> 00:40:25,010
Now the last bucket of rule changes in

1199
00:40:25,010 --> 00:40:26,959
the Imperium are about court orders.

1200
00:40:26,960 --> 00:40:30,530
Now this is this is pretty easy.

1201
00:40:30,530 --> 00:40:34,079
Where you want to codify the USPTO's

1202
00:40:34,079 --> 00:40:35,600
longstanding procedures concerning

1203
00:40:35,680 --> 00:40:38,512
action on court orders canceling or

1204
00:40:38,512 --> 00:40:41,259
affecting a registration under 15 USC 119.

1205
00:40:41,260 --> 00:40:43,114
The USPTO requires submission of a

1206
00:40:43,114 --> 00:40:45,263
certified copy of the court order and

1207
00:40:45,263 --> 00:40:47,265
normally does not act on such orders

1208
00:40:47,329 --> 00:40:49,369
until the case is finally determined.

1209
00:40:49,370 --> 00:40:50,618
We're just simply embedding

1210
00:40:50,618 --> 00:40:52,178
this practice into a rule.

1211
00:40:57,150 --> 00:40:59,422
So that was a summary of the rule

1212
00:40:59,422 --> 00:41:01,654
package and it was hopefully designed

1213
00:41:01,654 --> 00:41:04,042
to facilitate your efforts to provide

1214
00:41:04,114 --> 00:41:06,329
formal comments to regulations Gov.

1215
00:41:06,330 --> 00:41:08,184
We hope that you will be able to help

1216
00:41:08,184 --> 00:41:10,345
us refine this rule package into a final

1217
00:41:10,345 --> 00:41:12,556
rule with which we can all be comfortable.

1218
00:41:12,560 --> 00:41:13,755
And here's some information for

1219
00:41:13,755 --> 00:41:15,257
you about how to submit formal

1220
00:41:15,257 --> 00:41:16,787
comments and what the deadline is.

1221
00:41:22,270 --> 00:41:24,650
Here are some helpful links or remember,

1222
00:41:24,650 --> 00:41:27,370
this is already posted on the USPTO TMI

1223
00:41:27,370 --> 00:41:31,220
webpage, so here's some links for you.

1224
00:41:31,220 --> 00:41:32,935
And then I thought it might be

1225
00:41:32,935 --> 00:41:34,853
helpful for you all to have set

1226
00:41:34,853 --> 00:41:36,263
of reference slides that identify

1227
00:41:36,263 --> 00:41:38,149
the rules implicated in the NPRM,

1228
00:41:38,150 --> 00:41:40,634
and I'm not going to walk through them now,

1229
00:41:40,640 --> 00:41:44,159
but they will be available on the slide deck.

1230
00:41:44,160 --> 00:41:46,043
And you can see we have the

1231
00:41:46,043 --> 00:41:47,570
letter of protest rule tweak.

1232
00:41:47,570 --> 00:41:48,985
There we've got conforming amendments

1233
00:41:48,985 --> 00:41:50,117
for shortened response period.

1234
00:41:50,120 --> 00:41:51,830
There's there's no new rules there,

1235
00:41:51,830 --> 00:41:53,132
just conforming amendments.

1236
00:41:53,132 --> 00:41:56,719
We have some new rules here for non

1237
00:41:56,719 --> 00:41:58,603
use cancellation and conforming

1238
00:41:58,603 --> 00:42:00,958
amendment rules for non use.

1239
00:42:00,960 --> 00:42:03,116
And then we have the rules implicated

1240
00:42:03,116 --> 00:42:05,060
with the recognition of representation,

1241
00:42:05,060 --> 00:42:05,746
withdrawal rules,

1242
00:42:05,746 --> 00:42:07,118
and the Court orders.

1243
00:42:10,780 --> 00:42:13,516
So I wanted to close my remarks with

1244
00:42:13,516 --> 00:42:15,785
a suggestion you might have noticed

1245
00:42:15,785 --> 00:42:18,047
that as part of our initiatives

1246
00:42:18,124 --> 00:42:20,680
to protect the integrity of the

1247
00:42:20,680 --> 00:42:22,776
trademark register from false claims

1248
00:42:22,776 --> 00:42:24,706
of use and fraudulent submissions.

1249
00:42:24,710 --> 00:42:25,484
More generally,

1250
00:42:25,484 --> 00:42:27,032
we're implementing disincentives for

1251
00:42:27,032 --> 00:42:28,193
maintaining inaccurate registrations,

1252
00:42:28,200 --> 00:42:29,796
or perhaps more positively,

1253
00:42:29,796 --> 00:42:31,791
I should say we're incentivizing

1254
00:42:31,791 --> 00:42:33,060
accurate registrations.

1255
00:42:33,060 --> 00:42:35,406
So I mentioned before 1 disincentive,

1256
00:42:35,410 --> 00:42:37,750
which was implemented in January 2021.

1257
00:42:37,750 --> 00:42:40,096
Is that deletion fee in the

1258
00:42:40,096 --> 00:42:41,269
post registration context?

1259
00:42:41,270 --> 00:42:43,616
The other is the TMI expungement

1260
00:42:43,616 --> 00:42:44,398
reexamination proceeding.

1261
00:42:44,400 --> 00:42:46,872
It's a disincentive to filing inaccurate

1262
00:42:46,872 --> 00:42:50,369
and holding on to inaccurate registrations.

1263
00:42:50,370 --> 00:42:54,426
So. We want to incentivize.

1264
00:42:54,426 --> 00:42:55,908
Maintaining accurate registrations

1265
00:42:55,908 --> 00:42:58,978
and one way we did that was to

1266
00:42:58,978 --> 00:43:01,049
establish a zero fee for filing

1267
00:43:01,049 --> 00:43:02,969
of section seven amendment,

1268
00:43:02,970 --> 00:43:04,640
which deletes unused goods and

1269
00:43:04,640 --> 00:43:05,976
services from the registration.

1270
00:43:05,980 --> 00:43:08,318
So I really would would highlight that.

1271
00:43:08,320 --> 00:43:10,060
Recommend that to registrants and

1272
00:43:10,060 --> 00:43:11,452
their representatives to review

1273
00:43:11,452 --> 00:43:12,875
their registrations for accuracy

1274
00:43:12,875 --> 00:43:14,570
and make adjustments now through

1275
00:43:14,570 --> 00:43:16,330
this free process and doing so.

1276
00:43:16,330 --> 00:43:18,563
Then it's an easy way to avoid

1277
00:43:18,563 --> 00:43:19,999
having one registration targeted

1278
00:43:19,999 --> 00:43:22,094
for re examination or expungement

1279
00:43:22,094 --> 00:43:24,347
proceeding or getting caught up in

1280
00:43:24,347 --> 00:43:26,139
having to pay the $250 per class.

1281
00:43:26,140 --> 00:43:28,186
Deletion fee in a post registration,

1282
00:43:28,190 --> 00:43:29,900
examined maintenance, examination, or audit.

1283
00:43:29,900 --> 00:43:31,934
So that was my public service

1284
00:43:31,934 --> 00:43:33,290
announcement announcement to help

1285
00:43:33,347 --> 00:43:35,381
you think about cleaning up your

1286
00:43:35,381 --> 00:43:36,737
registrations early and often.

1287
00:43:36,740 --> 00:43:39,064
And now I'd like to hear what

1288
00:43:39,064 --> 00:43:40,769
comments and questions that are

1289
00:43:40,769 --> 00:43:42,683
speakers have today and we actually

1290
00:43:42,683 --> 00:43:44,609
got a bunch of questions.

1291
00:43:44,610 --> 00:43:45,978
A pretty, pretty recently,

1292
00:43:45,978 --> 00:43:46,320
uh,

1293
00:43:46,320 --> 00:43:49,152
in the mailbox that we will try to

1294
00:43:49,152 --> 00:43:51,904
go through after we hear from our

1295
00:43:51,904 --> 00:43:54,249
our live speakers and we'll try

1296
00:43:54,249 --> 00:43:56,931
to get to as many as we can today.

1297
00:43:56,940 --> 00:43:58,627
If you have a question that you

1298
00:43:58,627 --> 00:44:00,907
would like us to try to answer that

1299
00:44:00,907 --> 00:44:02,407
hasn't already have been answered.

1300
00:44:02,410 --> 00:44:04,790
Please email TM underscore webinar

1301
00:44:04,790 --> 00:44:07,680
at USPTO Gov and they will.

1302
00:44:07,680 --> 00:44:11,736
Those questions will be fed to

1303
00:44:11,736 --> 00:44:15,047
us by the Tasha. OK.

1304
00:44:15,047 --> 00:44:19,296
So Tasha turning it back to you.

1305
00:44:19,300 --> 00:44:20,284
Thanks Amy,

1306
00:44:20,284 --> 00:44:23,236
our first speaker is Michelle Horror.

1307
00:44:31,230 --> 00:44:34,730
Sheldon, please bear with you.

1308
00:44:34,730 --> 00:44:36,826
Please bear with us as we try to

1309
00:44:36,826 --> 00:44:38,896
elevate the speakers up to the panel.

1310
00:44:45,210 --> 00:44:49,140
How? Can you hear me now?

1311
00:44:49,140 --> 00:44:50,900
Yes, we can hear you.

1312
00:44:50,900 --> 00:44:53,000
OK, great thank you all right.

1313
00:44:53,000 --> 00:44:55,340
I want to briefly mention that

1314
00:44:55,340 --> 00:44:58,079
I reviewed and read some of the

1315
00:44:58,079 --> 00:45:00,641
comments that were on June the 1st.

1316
00:45:00,650 --> 00:45:02,326
And I agree with.

1317
00:45:02,326 --> 00:45:04,840
Some of the written comments from

1318
00:45:04,925 --> 00:45:07,535
the Council for Amazon for the

1319
00:45:07,535 --> 00:45:10,219
counsel Miss London at a private

1320
00:45:10,219 --> 00:45:13,208
law firm for the president at the

1321
00:45:13,208 --> 00:45:14,954
American Intellectual Property Law

1322
00:45:14,954 --> 00:45:17,144
Association and the Attorney for

1323
00:45:17,144 --> 00:45:19,020
General Electric and in so doing,

1324
00:45:19,020 --> 00:45:21,788
I wanted to also add just a few

1325
00:45:21,788 --> 00:45:24,010
things with a question number.

1326
00:45:24,010 --> 00:45:26,872
One is about the standing issue

1327
00:45:26,872 --> 00:45:28,780
for the third parties.

1328
00:45:28,780 --> 00:45:30,960
I'm concerned that there may

1329
00:45:30,960 --> 00:45:32,704
be issues of retaliation.

1330
00:45:32,710 --> 00:45:35,390
From and by third parties,

1331
00:45:35,390 --> 00:45:38,060
either against Council or against

1332
00:45:38,060 --> 00:45:42,148
the registrant. So how will?

1333
00:45:42,150 --> 00:45:43,805
I guess specifically Mr Robert

1334
00:45:43,805 --> 00:45:45,850
and the Bosch and his team,

1335
00:45:45,850 --> 00:45:47,596
and please forgive me if I'm

1336
00:45:47,596 --> 00:45:49,540
saying his last name incorrectly.

1337
00:45:49,540 --> 00:45:52,935
How will? How will that be dealt

1338
00:45:52,935 --> 00:45:55,978
with and then second of all?

1339
00:45:55,980 --> 00:45:58,902
My concern is about the $250

1340
00:45:58,902 --> 00:46:00,850
deletion fee per class.

1341
00:46:00,850 --> 00:46:04,010
Why that's so much money?

1342
00:46:04,010 --> 00:46:06,775
It's it seems to be a penalty.

1343
00:46:06,780 --> 00:46:08,476
Instead of an encouragement

1344
00:46:08,476 --> 00:46:10,596
for doing the right thing.

1345
00:46:10,600 --> 00:46:12,620
And then.

1346
00:46:12,620 --> 00:46:15,860
The 30 day letter is welcomed by me.

1347
00:46:15,860 --> 00:46:17,885
The more notice you give

1348
00:46:17,885 --> 00:46:19,505
the individuals in advance,

1349
00:46:19,510 --> 00:46:22,793
the better and happier and more Peace

1350
00:46:22,793 --> 00:46:26,819
of Mind you're going to be giving your PTO.

1351
00:46:26,820 --> 00:46:28,720
Customers.

1352
00:46:28,720 --> 00:46:29,424
In addition,

1353
00:46:29,424 --> 00:46:31,536
I'm going through this very quickly

1354
00:46:31,536 --> 00:46:33,492
because I don't want to know

1355
00:46:33,492 --> 00:46:35,274
when to be respectful of time.

1356
00:46:35,280 --> 00:46:41,169
In addition. 22 last things.

1357
00:46:41,170 --> 00:46:42,640
I know from personal experience

1358
00:46:42,640 --> 00:46:44,515
that there is an issue that

1359
00:46:44,515 --> 00:46:45,907
is never usually addressed,

1360
00:46:45,910 --> 00:46:48,129
so I'm going to address it now

1361
00:46:48,129 --> 00:46:50,763
for the first time and that is

1362
00:46:50,763 --> 00:46:52,768
the issue of incompetent counsel.

1363
00:46:52,770 --> 00:46:55,050
Many times.

1364
00:46:55,050 --> 00:46:58,170
Applicants who then become registrants.

1365
00:46:58,170 --> 00:46:59,934
I've had incompetent council

1366
00:46:59,934 --> 00:47:03,104
and they have to deal with the

1367
00:47:03,104 --> 00:47:05,309
deck that they've been given.

1368
00:47:05,310 --> 00:47:06,630
And then they don't know

1369
00:47:06,630 --> 00:47:07,686
how to correct things.

1370
00:47:07,690 --> 00:47:10,385
They they don't know what to do.

1371
00:47:10,390 --> 00:47:12,664
So I understand about the withdrawal

1372
00:47:12,664 --> 00:47:15,170
of counsel and and the process

1373
00:47:15,170 --> 00:47:17,006
and procedure that's needed.

1374
00:47:17,010 --> 00:47:18,921
But I kindly,

1375
00:47:18,921 --> 00:47:21,469
thoughtfully and professionally ask

1376
00:47:21,469 --> 00:47:24,950
him request. That from henceforth on.

1377
00:47:24,950 --> 00:47:27,150
The issue about incompetent

1378
00:47:27,150 --> 00:47:30,005
counsel be at least considered

1379
00:47:30,005 --> 00:47:32,785
and addressed and then finally.

1380
00:47:32,790 --> 00:47:35,310
On all the pages that I've

1381
00:47:35,310 --> 00:47:37,840
noticed on the PTS website,

1382
00:47:37,840 --> 00:47:41,280
especially with the T, the.

1383
00:47:41,280 --> 00:47:44,960
The TMI.

1384
00:47:44,960 --> 00:47:48,677
When you do it, when you click the dropdown.

1385
00:47:48,680 --> 00:47:50,244
There's Facebook, there's Twitter,

1386
00:47:50,244 --> 00:47:51,026
there's LinkedIn.

1387
00:47:51,030 --> 00:47:52,985
There's dig that I've never

1388
00:47:52,985 --> 00:47:54,940
heard of and read it.

1389
00:47:54,940 --> 00:47:57,400
But the one symbol that's

1390
00:47:57,400 --> 00:47:59,860
missing is the email symbol.

1391
00:47:59,860 --> 00:48:01,508
Because this is important

1392
00:48:01,508 --> 00:48:02,744
information to share.

1393
00:48:02,750 --> 00:48:05,144
In fact, all of the PTO

1394
00:48:05,144 --> 00:48:07,290
information is important to share,

1395
00:48:07,290 --> 00:48:11,934
and if you if the detect team can consider.

1396
00:48:11,940 --> 00:48:12,487
Including.

1397
00:48:12,487 --> 00:48:15,769
Up next to the printer symbol,

1398
00:48:15,770 --> 00:48:18,458
the an email symbol that also joins.

1399
00:48:18,460 --> 00:48:20,770
You know the symbol for Facebook,

1400
00:48:20,770 --> 00:48:21,538
Twitter, LinkedIn,

1401
00:48:21,538 --> 00:48:22,690
Digg and Reddit.

1402
00:48:22,690 --> 00:48:24,470
That would be wonderful and

1403
00:48:24,470 --> 00:48:26,910
and that is my public comment.

1404
00:48:26,910 --> 00:48:29,598
Thank you very much for your interest,

1405
00:48:29,600 --> 00:48:31,520
your thoughtfulness and your time.

1406
00:48:33,610 --> 00:48:34,792
Thank you, Michelle.

1407
00:48:34,792 --> 00:48:37,550
I'm going to go through these issues

1408
00:48:37,620 --> 00:48:40,230
as quickly as I can on the the question

1409
00:48:40,230 --> 00:48:42,662
of standing that that question has

1410
00:48:42,662 --> 00:48:45,123
been answered by the Statute itself

1411
00:48:45,123 --> 00:48:47,038
and there's no standing requirement

1412
00:48:47,038 --> 00:48:50,334
any any person can file in my remarks I

1413
00:48:50,334 --> 00:48:52,474
mentioned about whether we should the

1414
00:48:52,474 --> 00:48:54,736
USPTO should require the petitioner to

1415
00:48:54,736 --> 00:48:57,010
identify the real party in interest,

1416
00:48:57,010 --> 00:49:00,103
and I explained why we we had not

1417
00:49:00,103 --> 00:49:02,919
put anything in the rule to do that.

1418
00:49:02,920 --> 00:49:04,012
A number one.

1419
00:49:04,012 --> 00:49:06,196
If their evidence is there that

1420
00:49:06,196 --> 00:49:08,047
the mark is not in use,

1421
00:49:08,050 --> 00:49:09,982
it doesn't matter who who put it

1422
00:49:09,982 --> 00:49:11,809
forth and #2 the petitioner is

1423
00:49:11,809 --> 00:49:13,993
not a party to the proceeding and

1424
00:49:14,064 --> 00:49:16,149
bringing them into the proceeding,

1425
00:49:16,150 --> 00:49:18,238
then we're in an inter partes

1426
00:49:18,238 --> 00:49:20,269
proceeding and the intent of the

1427
00:49:20,269 --> 00:49:21,979
statute for a very quick and,

1428
00:49:21,980 --> 00:49:22,682
you know,

1429
00:49:22,682 --> 00:49:24,437
effective way to clear Deadwood

1430
00:49:24,437 --> 00:49:26,519
off the register sort of is lost,

1431
00:49:26,520 --> 00:49:28,458
as I mentioned in my remarks,

1432
00:49:28,460 --> 00:49:30,924
we do have the ability to look into

1433
00:49:30,924 --> 00:49:32,805
situations where somebody is filing

1434
00:49:32,805 --> 00:49:34,805
improper submissions to the office.

1435
00:49:34,810 --> 00:49:36,885
The sanction authority of the

1436
00:49:36,885 --> 00:49:38,545
Commissioner for trademarks is

1437
00:49:38,545 --> 00:49:40,326
something that we are now using

1438
00:49:40,326 --> 00:49:42,283
to good effect when we are seeing

1439
00:49:42,283 --> 00:49:43,467
bad faith or fraud.

1440
00:49:43,470 --> 00:49:45,130
Fraudulent submissions before the office,

1441
00:49:45,130 --> 00:49:47,706
and we intend that we would use that

1442
00:49:47,706 --> 00:49:49,799
authority in this context as well.

1443
00:49:49,800 --> 00:49:51,798
If a petitioner is using the

1444
00:49:51,798 --> 00:49:53,130
proceedings for improper purpose.

1445
00:49:53,130 --> 00:49:55,116
So we we think we can,

1446
00:49:55,120 --> 00:49:57,352
we can get at it outside of the

1447
00:49:57,352 --> 00:49:59,448
context of the proceeding itself,

1448
00:49:59,450 --> 00:50:00,874
without requiring the petitioner

1449
00:50:00,874 --> 00:50:03,379
to be apart of the proceeding which

1450
00:50:03,379 --> 00:50:05,245
we can't do because the statute.

1451
00:50:05,250 --> 00:50:07,441
Says that so I just wanted to

1452
00:50:07,441 --> 00:50:09,690
highlight that the $250 deletion fee

1453
00:50:09,690 --> 00:50:11,765
in the post registration context.

1454
00:50:11,770 --> 00:50:14,262
That is a rule that already issued

1455
00:50:14,262 --> 00:50:16,483
for public comment and was implemented

1456
00:50:16,483 --> 00:50:17,560
a while ago.

1457
00:50:17,560 --> 00:50:19,008
Now your point was,

1458
00:50:19,008 --> 00:50:21,180
it's a punishment or an incentive.

1459
00:50:21,180 --> 00:50:22,990
It's a punishment by law,

1460
00:50:22,990 --> 00:50:25,198
by the statute you're supposed to

1461
00:50:25,198 --> 00:50:27,085
be filing a maintenance document

1462
00:50:27,085 --> 00:50:29,479
that is accurate and you are filing

1463
00:50:29,479 --> 00:50:32,037
that and signing in on a declaration

1464
00:50:32,037 --> 00:50:33,993
of perjury. 18 USC 1001.

1465
00:50:33,993 --> 00:50:36,048
So, to the extent that.

1466
00:50:36,050 --> 00:50:38,410
Filing a document that's inaccurate.

1467
00:50:38,410 --> 00:50:41,812
Then we are imposing a penalty and

1468
00:50:41,812 --> 00:50:44,631
the background for that penalty is

1469
00:50:44,631 --> 00:50:48,163
the fact that for let's see it since

1470
00:50:48,163 --> 00:50:51,565
2012 we have run the post registration

1471
00:50:51,565 --> 00:50:54,890
proof of use audit and 5000 registrations.

1472
00:50:54,890 --> 00:50:58,554
A year are audited and over the course

1473
00:50:58,554 --> 00:51:01,960
of that time frame 2012 to 2021,

1474
00:51:01,960 --> 00:51:04,380
the 50% of the registrations

1475
00:51:04,380 --> 00:51:06,800
queried deleted goods and services.

1476
00:51:06,800 --> 00:51:09,350
50% had inaccurate maintenance filings 50%,

1477
00:51:09,350 --> 00:51:11,900
and it was equal among foreign

1478
00:51:11,900 --> 00:51:13,600
registrants and US registrants.

1479
00:51:13,600 --> 00:51:16,575
It was equal between 44 / 66

1480
00:51:16,575 --> 00:51:18,700
registrations in one a registrations

1481
00:51:18,700 --> 00:51:20,998
and 80% of those were represented

1482
00:51:20,998 --> 00:51:24,216
by US Council who are part of the

1483
00:51:24,216 --> 00:51:26,651
process in filing an inaccurate

1484
00:51:26,651 --> 00:51:27,625
maintenance declaration.

1485
00:51:27,630 --> 00:51:28,286
So yes,

1486
00:51:28,286 --> 00:51:30,910
it is a $250 per class penalty for

1487
00:51:30,996 --> 00:51:33,580
filing an inaccurate declaration,

1488
00:51:33,580 --> 00:51:36,202
and we're hoping that it will

1489
00:51:36,202 --> 00:51:37,076
change behavior.

1490
00:51:37,080 --> 00:51:38,695
So that people will actually

1491
00:51:38,695 --> 00:51:39,987
file an accurate declaration.

1492
00:51:39,990 --> 00:51:40,959
So so yes,

1493
00:51:40,959 --> 00:51:43,220
that's that's the purpose of the rule,

1494
00:51:43,220 --> 00:51:45,416
and we hope that it doesn't catch up to

1495
00:51:45,416 --> 00:51:47,849
many people because we hope people are

1496
00:51:47,849 --> 00:51:50,074
cleaning up their registration and filing

1497
00:51:50,074 --> 00:51:51,934
accurate documents before the USPTO.

1498
00:51:51,940 --> 00:51:54,194
As for the point about incompetent counsel,

1499
00:51:54,200 --> 00:51:56,138
again, I addressed that in Rome.

1500
00:51:56,140 --> 00:51:58,324
I remarks in the sense that there's section

1501
00:51:58,324 --> 00:52:00,010
seven amendment process allows allows

1502
00:52:00,010 --> 00:52:02,182
registrants to correct whatever problems or

1503
00:52:02,182 --> 00:52:03,887
deficiencies exist in their registration,

1504
00:52:03,890 --> 00:52:06,110
as long as it's within the

1505
00:52:06,110 --> 00:52:07,590
scope of the original.

1506
00:52:07,590 --> 00:52:10,246
And we would encourage everyone to clean up

1507
00:52:10,246 --> 00:52:12,020
their registrations in order to do that,

1508
00:52:12,020 --> 00:52:13,700
make sure your proof of youth

1509
00:52:13,700 --> 00:52:15,182
matches the identifications of goods

1510
00:52:15,182 --> 00:52:16,737
and services in your registration.

1511
00:52:16,740 --> 00:52:18,510
If those problems haven't been fixed,

1512
00:52:18,510 --> 00:52:20,814
then they need to be when you file a

1513
00:52:20,814 --> 00:52:22,906
register when a registrant files you

1514
00:52:22,906 --> 00:52:24,676
know submissions before the office

1515
00:52:24,734 --> 00:52:26,568
and make their variants as to the

1516
00:52:26,568 --> 00:52:27,890
truth of the statements made,

1517
00:52:27,890 --> 00:52:30,010
so we would like to see that this

1518
00:52:30,071 --> 00:52:31,979
is the quality of the submissions

1519
00:52:31,979 --> 00:52:33,251
before the office improve,

1520
00:52:33,260 --> 00:52:35,564
and we think all of these little changes

1521
00:52:35,564 --> 00:52:37,448
that we're making our our design.

1522
00:52:37,450 --> 00:52:38,290
To do that,

1523
00:52:38,290 --> 00:52:41,069
and As for the icon on the tech team,

1524
00:52:41,070 --> 00:52:43,548
we will definitely look into that and

1525
00:52:43,548 --> 00:52:46,030
we appreciate the suggestion very much.

1526
00:52:46,030 --> 00:52:47,718
So now I think we need to move

1527
00:52:47,718 --> 00:52:49,280
to the next speaker Tasha.

1528
00:52:51,980 --> 00:52:54,500
Thanks Amy, our next speaker

1529
00:52:54,500 --> 00:52:56,516
is Alison Ricketts Allison.

1530
00:52:59,040 --> 00:53:02,406
Hello, how are you good afternoon?

1531
00:53:02,410 --> 00:53:04,842
I first I'm going to comment on your

1532
00:53:04,842 --> 00:53:07,033
request for comment on the weather

1533
00:53:07,033 --> 00:53:09,313
registrations that are the subject of

1534
00:53:09,377 --> 00:53:11,680
a non use proceeding should also be

1535
00:53:11,680 --> 00:53:13,696
selected for the post registration audit.

1536
00:53:13,696 --> 00:53:15,748
My view on that is no.

1537
00:53:15,750 --> 00:53:18,137
That audit is supposed to be random,

1538
00:53:18,140 --> 00:53:19,850
but this is not random.

1539
00:53:19,850 --> 00:53:22,244
You have limited resources to conduct audits.

1540
00:53:22,250 --> 00:53:24,511
I attended the web and are a

1541
00:53:24,511 --> 00:53:26,349
couple weeks ago about this.

1542
00:53:26,350 --> 00:53:28,120
The post registration audit and

1543
00:53:28,120 --> 00:53:30,948
you know you were only able to do

1544
00:53:30,948 --> 00:53:32,916
a small percentage of all filings.

1545
00:53:32,920 --> 00:53:35,404
Down filling up that already small

1546
00:53:35,404 --> 00:53:37,060
number with registrations that

1547
00:53:37,129 --> 00:53:38,685
have already been scrutinized

1548
00:53:38,685 --> 00:53:41,019
as a result of this proceeding,

1549
00:53:41,020 --> 00:53:43,463
I think is unlikely to greatly improve

1550
00:53:43,463 --> 00:53:45,880
the accuracy of those registrations,

1551
00:53:45,880 --> 00:53:48,498
but it could interfere with efforts to

1552
00:53:48,498 --> 00:53:51,148
improve the accuracy of other registrations,

1553
00:53:51,150 --> 00:53:52,894
and stakeholders have already

1554
00:53:52,894 --> 00:53:54,638
expressed concern that proceedings

1555
00:53:54,638 --> 00:53:57,055
may be instituted by bad actors

1556
00:53:57,055 --> 00:53:58,900
for reasons other than ensuring

1557
00:53:58,900 --> 00:54:00,868
the accuracy of the register,

1558
00:54:00,870 --> 00:54:02,940
so causing registrants further expense.

1559
00:54:02,940 --> 00:54:06,818
To undergo an audit only exacerbates the

1560
00:54:06,818 --> 00:54:09,810
potential for mischief by bad actors.

1561
00:54:09,810 --> 00:54:12,071
Turning to the UM and also I

1562
00:54:12,071 --> 00:54:13,729
think according to the NPRM,

1563
00:54:13,730 --> 00:54:15,355
you're estimating as many as

1564
00:54:15,355 --> 00:54:17,330
3600 of these proceedings a year,

1565
00:54:17,330 --> 00:54:19,652
and I know not all of those are going

1566
00:54:19,652 --> 00:54:21,957
to be due for post registration

1567
00:54:21,957 --> 00:54:23,537
filing during that period.

1568
00:54:23,540 --> 00:54:25,436
But even if you consider it

1569
00:54:25,436 --> 00:54:27,469
spread across three or four years,

1570
00:54:27,470 --> 00:54:30,080
that's a pretty substantial chunk of

1571
00:54:30,080 --> 00:54:33,058
what you have available to do each year.

1572
00:54:33,060 --> 00:54:33,695
OK,

1573
00:54:33,695 --> 00:54:38,140
I have a lot of questions about

1574
00:54:38,140 --> 00:54:43,167
the role based access proposal so.

1575
00:54:43,170 --> 00:54:45,200
Let's say that a new.

1576
00:54:45,200 --> 00:54:47,798
The ownership has been assigned to

1577
00:54:47,798 --> 00:54:50,867
a new attorney or to a new owner.

1578
00:54:50,870 --> 00:54:53,957
The new owner wishes to cause its

1579
00:54:53,957 --> 00:54:57,570
attorney to become the new attorney in these.

1580
00:54:57,570 --> 00:55:01,056
Registrations. How will they do that?

1581
00:55:01,060 --> 00:55:03,298
And is the answer different if

1582
00:55:03,298 --> 00:55:05,744
they have recorded the change of

1583
00:55:05,744 --> 00:55:07,929
ownership with the assignments branch

1584
00:55:07,929 --> 00:55:10,935
versus if they have not yet recorded

1585
00:55:10,935 --> 00:55:12,555
the change of ownership?

1586
00:55:12,560 --> 00:55:14,933
I I know it says that the

1587
00:55:14,933 --> 00:55:16,757
attorney who's currently in the

1588
00:55:16,757 --> 00:55:18,597
record is supposed to withdraw.

1589
00:55:18,600 --> 00:55:20,346
Once they know I forget the

1590
00:55:20,346 --> 00:55:22,668
rules or I have him here anyway,

1591
00:55:22,670 --> 00:55:24,973
once they know they've been discharged I

1592
00:55:24,973 --> 00:55:27,675
think is is one of the times when you,

1593
00:55:27,680 --> 00:55:29,244
when you may withdraw.

1594
00:55:29,244 --> 00:55:33,098
But you have up to 30 days to do that,

1595
00:55:33,100 --> 00:55:34,165
following when, well,

1596
00:55:34,165 --> 00:55:35,585
that's another point is,

1597
00:55:35,590 --> 00:55:37,504
I think that should say following

1598
00:55:37,504 --> 00:55:39,578
30 days when after the attorney

1599
00:55:39,578 --> 00:55:41,786
learns of that they have been

1600
00:55:41,786 --> 00:55:44,057
discharged rather than just 30 days

1601
00:55:44,057 --> 00:55:45,529
after they've been discharged.

1602
00:55:45,530 --> 00:55:47,895
If you consider that discharging

1603
00:55:47,895 --> 00:55:49,314
the attorney includes.

1604
00:55:49,320 --> 00:55:51,070
Transferring ownership of the registration,

1605
00:55:51,070 --> 00:55:53,100
it seems to me that the person

1606
00:55:53,100 --> 00:55:54,772
remaining in the record obviously

1607
00:55:54,772 --> 00:55:56,992
cannot be the attorney for an

1608
00:55:56,992 --> 00:55:59,681
unrelated new owner with whom it has

1609
00:55:59,681 --> 00:56:01,189
no attorney client relationship,

1610
00:56:01,190 --> 00:56:02,840
but that doesn't necessarily mean

1611
00:56:02,840 --> 00:56:05,195
that that person is going to be

1612
00:56:05,195 --> 00:56:06,815
immediately informed by the parties

1613
00:56:06,815 --> 00:56:08,520
involved in this transaction.

1614
00:56:08,520 --> 00:56:09,276
That, hey,

1615
00:56:09,276 --> 00:56:11,166
you've been discharged by virtue

1616
00:56:11,166 --> 00:56:12,300
of this assignment

1617
00:56:12,361 --> 00:56:14,793
and you need to withdraw within 30 days.

1618
00:56:14,800 --> 00:56:17,236
So I think there should be some,

1619
00:56:17,240 --> 00:56:19,406
you know, notification in 30 days.

1620
00:56:19,410 --> 00:56:21,034
After you find out.

1621
00:56:21,034 --> 00:56:24,040
Uhm, but let's say that you are the new

1622
00:56:24,040 --> 00:56:27,275
owner and you want to record the assignment,

1623
00:56:27,280 --> 00:56:29,681
but you have some problems you found

1624
00:56:29,681 --> 00:56:32,129
in your diligence when you went to

1625
00:56:32,129 --> 00:56:34,151
acquire this portfolio that there is

1626
00:56:34,219 --> 00:56:37,026
some errors in some of the registrations

1627
00:56:37,026 --> 00:56:38,960
that inadvertently had identified the

1628
00:56:38,960 --> 00:56:41,004
wrong state of incorporation, for example.

1629
00:56:41,004 --> 00:56:43,340
So, in order to be able to record

1630
00:56:43,408 --> 00:56:45,598
the assignment which lists the

1631
00:56:45,598 --> 00:56:47,350
correct state of incorporation,

1632
00:56:47,350 --> 00:56:51,120
you need to file a Section 7 to get those.

1633
00:56:51,120 --> 00:56:52,300
Registration's fixed.

1634
00:56:52,300 --> 00:56:56,430
Now who is going to have the

1635
00:56:56,430 --> 00:56:59,927
role based access to make that?

1636
00:56:59,930 --> 00:57:00,486
Correction,

1637
00:57:00,486 --> 00:57:03,266
which is a condition precedent

1638
00:57:03,266 --> 00:57:05,490
to recording the assignment.

1639
00:57:08,120 --> 00:57:11,016
Anything more that you can say about how

1640
00:57:11,016 --> 00:57:13,988
this role based access is going to work,

1641
00:57:13,990 --> 00:57:16,192
especially in the case about transfers

1642
00:57:16,192 --> 00:57:17,968
of ownership, would be really,

1643
00:57:17,968 --> 00:57:20,044
really helpful in in terms of

1644
00:57:20,044 --> 00:57:21,700
preparing the withdrawal form.

1645
00:57:21,700 --> 00:57:23,535
I've had some bad experiences

1646
00:57:23,535 --> 00:57:25,370
with that in the past,

1647
00:57:25,370 --> 00:57:27,140
but I've reported them and

1648
00:57:27,140 --> 00:57:28,910
I'm hopeful that the comments

1649
00:57:28,973 --> 00:57:30,868
have resulted in some changes.

1650
00:57:30,870 --> 00:57:31,971
But for example,

1651
00:57:31,971 --> 00:57:34,540
let's say you're discharged by the applicant,

1652
00:57:34,540 --> 00:57:37,333
but the applicant is an XUS domiciled

1653
00:57:37,333 --> 00:57:39,748
entity required to have US council.

1654
00:57:39,750 --> 00:57:41,670
How will the attorney withdraw,

1655
00:57:41,670 --> 00:57:43,905
thus rendering the XUS domiciled

1656
00:57:43,905 --> 00:57:46,562
registrants without US Council if they

1657
00:57:46,562 --> 00:57:48,674
do not have any information about

1658
00:57:48,674 --> 00:57:51,154
whether a new US Council we will

1659
00:57:51,154 --> 00:57:53,529
be appointed and who that might be?

1660
00:57:53,529 --> 00:57:56,241
Also, will we be required to fill in

1661
00:57:56,241 --> 00:57:59,021
stuff like the the the Registrant's

1662
00:57:59,021 --> 00:58:01,381
email address and domicile address

1663
00:58:01,461 --> 00:58:03,729
just in order to have access to

1664
00:58:03,729 --> 00:58:06,246
the forms to allow us to withdraw?

1665
00:58:06,246 --> 00:58:08,550
I see my time is up.

1666
00:58:08,550 --> 00:58:09,320
Thank you.

1667
00:58:12,000 --> 00:58:13,430
Thank you very much, Alice,

1668
00:58:13,430 --> 00:58:15,173
and you know I'm going to suggest

1669
00:58:15,173 --> 00:58:17,041
that you a file formal comments so

1670
00:58:17,041 --> 00:58:19,032
that we get all of that information

1671
00:58:19,032 --> 00:58:21,405
and can and can review it carefully.

1672
00:58:21,410 --> 00:58:23,903
I think you write some some good points that

1673
00:58:23,903 --> 00:58:26,536
we we need to consider as we move forward,

1674
00:58:26,540 --> 00:58:28,444
so I'm happy to encourage you to to

1675
00:58:28,444 --> 00:58:30,658
go as I know you will regulations.gov

1676
00:58:30,658 --> 00:58:32,810
and file those comments so we can.

1677
00:58:32,810 --> 00:58:34,784
We can come look at them more

1678
00:58:34,784 --> 00:58:36,531
carefully and think about how they

1679
00:58:36,531 --> 00:58:38,217
would work in the final rule.

1680
00:58:38,220 --> 00:58:39,978
So thank you very much Alice

1681
00:58:39,978 --> 00:58:41,570
and I appreciate the input.

1682
00:58:41,570 --> 00:58:42,008
I don't.

1683
00:58:42,008 --> 00:58:43,990
I don't have any comments for you right now.

1684
00:58:43,990 --> 00:58:44,430
Unless Bob,

1685
00:58:44,430 --> 00:58:46,190
do you have anything you want to add?

1686
00:58:48,970 --> 00:58:51,469
I don't there was a lot there.

1687
00:58:51,470 --> 00:58:53,958
Uhm, I will say you know we are

1688
00:58:53,958 --> 00:58:56,670
of course aware of some of the

1689
00:58:56,670 --> 00:58:58,680
issues with submitting forms and

1690
00:58:58,762 --> 00:59:01,149
we are actively working on on on

1691
00:59:01,149 --> 00:59:03,137
those and on the ownership issue.

1692
00:59:03,137 --> 00:59:05,051
It is a complicated issue in

1693
00:59:05,051 --> 00:59:06,820
terms of attorney recognition,

1694
00:59:06,820 --> 00:59:08,764
so I would echo Amy's comments

1695
00:59:08,764 --> 00:59:10,530
there that please submit formal

1696
00:59:10,530 --> 00:59:12,178
comments with your concerns.

1697
00:59:12,180 --> 00:59:14,316
I sure will. Thanks so much.

1698
00:59:16,410 --> 00:59:19,730
Thank you, our next speaker is Ted Davis.

1699
00:59:23,330 --> 00:59:25,586
Thank you, I have three questions,

1700
00:59:25,590 --> 00:59:28,880
each of which relates to the initiation.

1701
00:59:28,880 --> 00:59:32,055
Of an ex parte proceeding. Uhm?

1702
00:59:32,055 --> 00:59:34,245
The notice advocates that a prime

1703
00:59:34,245 --> 00:59:36,633
aphasia case requires only a reasonable

1704
00:59:36,633 --> 00:59:38,269
predicate concerning non use,

1705
00:59:38,270 --> 00:59:41,033
and there does seem to be a consensus that

1706
00:59:41,033 --> 00:59:43,835
a prime aphasia case is something less

1707
00:59:43,835 --> 00:59:46,763
than proving the case by a preponderance

1708
00:59:46,763 --> 00:59:49,229
of the evidence and the testimony.

1709
00:59:49,230 --> 00:59:52,078
But the notice also resides at the office

1710
00:59:52,078 --> 00:59:54,816
bears the ultimate burden of proving non

1711
00:59:54,816 --> 00:59:57,750
use by a preponderance of the evidence.

1712
00:59:57,750 --> 01:00:00,991
Does this standard apply as well to

1713
01:00:00,991 --> 01:00:03,740
petitions initiated by private parties?

1714
01:00:06,350 --> 01:00:09,086
My second question relates to what

1715
01:00:09,086 --> 01:00:11,448
happens if a petition establishes

1716
01:00:11,448 --> 01:00:14,584
a prime aphasia case of non use.

1717
01:00:14,590 --> 01:00:18,006
But it's not accepted for some other reason.

1718
01:00:18,010 --> 01:00:20,550
For example, a failure to

1719
01:00:20,550 --> 01:00:22,074
describe the petitioners

1720
01:00:22,074 --> 01:00:24,539
investigation in sufficient detail.

1721
01:00:24,540 --> 01:00:26,946
You have indicated that the director

1722
01:00:26,946 --> 01:00:30,260
will not add to a deficient petition.

1723
01:00:30,260 --> 01:00:32,390
But can the director otherwise

1724
01:00:32,390 --> 01:00:35,058
avail himself or herself of the

1725
01:00:35,058 --> 01:00:36,918
evidence submitted in support

1726
01:00:36,918 --> 01:00:38,778
of the failed petition?

1727
01:00:38,780 --> 01:00:40,885
In support of a director

1728
01:00:40,885 --> 01:00:41,727
initiated proceeding.

1729
01:00:44,150 --> 01:00:46,406
And then finally, the notice indicates

1730
01:00:46,406 --> 01:00:48,869
that if a proceeding is instituted,

1731
01:00:48,870 --> 01:00:51,645
the petitioner will not have

1732
01:00:51,645 --> 01:00:53,310
any further involvement.

1733
01:00:53,310 --> 01:00:56,754
But can a petitioner withdraw or

1734
01:00:56,754 --> 01:00:59,050
supplement its petition prior

1735
01:00:59,144 --> 01:01:01,826
to the director acting on it?

1736
01:01:01,830 --> 01:01:03,012
If, for example,

1737
01:01:03,012 --> 01:01:06,760
the petitioner is paid off by a registrant.

1738
01:01:06,760 --> 01:01:07,940
Or, alternatively,

1739
01:01:07,940 --> 01:01:10,300
the registrant provides the

1740
01:01:10,300 --> 01:01:12,660
petitioner with evidence of

1741
01:01:12,745 --> 01:01:14,977
use as of the relevant date.

1742
01:01:20,990 --> 01:01:23,042
Thank you, Ted. I'm reading your

1743
01:01:23,042 --> 01:01:24,970
comments in the caption as well.

1744
01:01:24,970 --> 01:01:26,298
Trying to process them.

1745
01:01:26,298 --> 01:01:28,974
Uhm, I think the I don't know that we

1746
01:01:28,974 --> 01:01:31,607
can answer any of those questions today.

1747
01:01:31,610 --> 01:01:33,410
I think that if you submit

1748
01:01:33,410 --> 01:01:35,270
them in your formal comments,

1749
01:01:35,270 --> 01:01:37,657
that will give us some time to

1750
01:01:37,657 --> 01:01:39,374
internally digest and figure out

1751
01:01:39,374 --> 01:01:41,565
what we think the the answer is,

1752
01:01:41,570 --> 01:01:43,230
particularly on the second issue.

1753
01:01:43,230 --> 01:01:45,710
Uhm, you know that's something that we we

1754
01:01:45,710 --> 01:01:48,679
need to consider how we're going to address.

1755
01:01:48,680 --> 01:01:51,040
If you have a preference for how you

1756
01:01:51,040 --> 01:01:53,399
would like us to address any of those,

1757
01:01:53,400 --> 01:01:54,880
we would greatly appreciate that.

1758
01:01:54,880 --> 01:01:56,650
Not just pointing out the issue,

1759
01:01:56,650 --> 01:01:59,296
but how you think that it should be handled.

1760
01:01:59,300 --> 01:02:00,480
The NPRM does not,

1761
01:02:00,480 --> 01:02:02,250
of course go into these issues,

1762
01:02:02,250 --> 01:02:04,315
so it's really a matter of implementation.

1763
01:02:04,320 --> 01:02:06,378
Drilling lowered down further than the rule,

1764
01:02:06,380 --> 01:02:07,948
and so we're we're happy to take

1765
01:02:07,948 --> 01:02:09,843
in any of that information through

1766
01:02:09,843 --> 01:02:11,399
the formal comment period,

1767
01:02:11,400 --> 01:02:13,465
but I I don't have any comments

1768
01:02:13,465 --> 01:02:14,350
on that today.

1769
01:02:14,350 --> 01:02:16,401
Is there anybody on my panel who

1770
01:02:16,401 --> 01:02:18,816
would like to to answer any of those?

1771
01:02:18,820 --> 01:02:19,114
Correct,

1772
01:02:19,114 --> 01:02:20,290
have anything to say?

1773
01:02:31,990 --> 01:02:32,900
I guess that's a no.

1774
01:02:36,190 --> 01:02:37,110
But thank you so much.

1775
01:02:37,110 --> 01:02:38,426
I knew your question.

1776
01:02:38,426 --> 01:02:40,400
I knew your questions would be

1777
01:02:40,472 --> 01:02:42,087
very thoughtful and stumped the

1778
01:02:42,087 --> 01:02:44,658
panel for for a few as we as we

1779
01:02:44,658 --> 01:02:46,233
have to go back and and consult

1780
01:02:46,233 --> 01:02:47,934
and and figure out how we might

1781
01:02:47,934 --> 01:02:49,699
try to answer those questions.

1782
01:02:49,700 --> 01:02:51,130
We will certainly do that.

1783
01:02:53,350 --> 01:02:55,450
Uhm, the next speaker is actually,

1784
01:02:55,450 --> 01:02:58,439
UM, Matt Frisbie, who emailed me the

1785
01:02:58,439 --> 01:03:01,710
questions that he was going to ask and I

1786
01:03:01,710 --> 01:03:04,797
will go ahead and read out his question.

1787
01:03:04,800 --> 01:03:06,345
And because he gave them

1788
01:03:06,345 --> 01:03:08,310
to me with plenty of time,

1789
01:03:08,310 --> 01:03:10,854
we were able to have some answers ready.

1790
01:03:10,860 --> 01:03:11,820
Mr. Frisbie question.

1791
01:03:11,820 --> 01:03:12,460
First question,

1792
01:03:12,460 --> 01:03:14,609
it is clear that the director cannot

1793
01:03:14,609 --> 01:03:15,894
supplement an inadequate third

1794
01:03:15,894 --> 01:03:17,429
party petition unless the Director

1795
01:03:17,429 --> 01:03:19,470
initiates his or her own proceeding.

1796
01:03:19,470 --> 01:03:21,808
However, will the director be able to

1797
01:03:21,808 --> 01:03:23,467
conduct additional diligence to verify

1798
01:03:23,467 --> 01:03:24,962
the authenticity of evidence submitted

1799
01:03:24,962 --> 01:03:27,129
by a third party or the registrant?

1800
01:03:27,130 --> 01:03:29,350
Or is the Directores review limited

1801
01:03:29,350 --> 01:03:32,239
to the four corners of the submissions

1802
01:03:32,239 --> 01:03:34,469
and the registration file wrapper?

1803
01:03:34,470 --> 01:03:36,468
Thank you for the question Matt.

1804
01:03:36,470 --> 01:03:38,852
Under proposed Rule 2.92 and expungement

1805
01:03:38,852 --> 01:03:40,820
or reexamination proceedings will be

1806
01:03:40,820 --> 01:03:42,430
instituted only in connection with

1807
01:03:42,430 --> 01:03:44,311
the goods and services for which

1808
01:03:44,311 --> 01:03:45,919
a primary facie case of relevant

1809
01:03:45,919 --> 01:03:47,444
non use has been established.

1810
01:03:47,444 --> 01:03:49,084
The PTO's determination of whether

1811
01:03:49,084 --> 01:03:50,458
partition has established apartment

1812
01:03:50,458 --> 01:03:52,456
facing cases based on the evidence

1813
01:03:52,456 --> 01:03:53,780
submitted with the petition,

1814
01:03:53,780 --> 01:03:55,712
as well as any other evidence already

1815
01:03:55,712 --> 01:03:57,792
available in the USPTO registration record

1816
01:03:57,792 --> 01:03:59,777
which includes the application file.

1817
01:03:59,780 --> 01:04:01,790
USPTO will review the evidence submitted

1818
01:04:01,790 --> 01:04:04,510
with the petition to determine its relevance.

1819
01:04:04,510 --> 01:04:06,105
And probative value in certain

1820
01:04:06,105 --> 01:04:08,402
cases that review may result in a

1821
01:04:08,402 --> 01:04:10,022
determination that evidence is not

1822
01:04:10,022 --> 01:04:12,260
persuasive or should not be giving any

1823
01:04:12,260 --> 01:04:14,072
given any weight in the determination.

1824
01:04:14,080 --> 01:04:15,844
We anticipate that generally this review

1825
01:04:15,844 --> 01:04:18,085
will be limited to the registration record

1826
01:04:18,085 --> 01:04:20,451
in the evidence submitted by the petitioner.

1827
01:04:20,460 --> 01:04:21,955
But if other evidence that

1828
01:04:21,955 --> 01:04:23,450
affects the probative value of

1829
01:04:23,510 --> 01:04:24,930
the evidence is considered,

1830
01:04:24,930 --> 01:04:27,520
we will provide that evidence and explain

1831
01:04:27,520 --> 01:04:30,958
it in the USPTO's petition determination.

1832
01:04:30,960 --> 01:04:32,740
OK.

1833
01:04:32,740 --> 01:04:35,228
He gave us warning so we were able

1834
01:04:35,228 --> 01:04:38,186
to have our answers at the ready and

1835
01:04:38,186 --> 01:04:40,440
his second question in the NPRM.

1836
01:04:40,440 --> 01:04:43,344
Most office actions will have a three month

1837
01:04:43,344 --> 01:04:45,689
response deadline under Rule 2.62 and 2.163.

1838
01:04:45,690 --> 01:04:47,580
But the proposed deadline to respond

1839
01:04:47,580 --> 01:04:49,304
in an expungement or reexamination

1840
01:04:49,304 --> 01:04:50,940
proceeding is 2 months.

1841
01:04:50,940 --> 01:04:53,155
Can you elaborate on the

1842
01:04:53,155 --> 01:04:54,927
rationale for the difference?

1843
01:04:54,930 --> 01:04:55,884
Yes, we can.

1844
01:04:55,884 --> 01:04:57,156
The proposed two months,

1845
01:04:57,160 --> 01:04:58,715
two months response period for

1846
01:04:58,715 --> 01:05:00,630
expungement and re examination was was

1847
01:05:00,630 --> 01:05:01,854
proposed because these proceedings

1848
01:05:01,854 --> 01:05:04,092
are supposed to be faster and more

1849
01:05:04,092 --> 01:05:05,722
efficient than other available options

1850
01:05:05,722 --> 01:05:07,654
for cancellation due to non use.

1851
01:05:07,654 --> 01:05:08,290
In addition,

1852
01:05:08,290 --> 01:05:09,905
unlike other office actions issued

1853
01:05:09,905 --> 01:05:11,520
during the application process and

1854
01:05:11,567 --> 01:05:13,252
in connection with post registration

1855
01:05:13,252 --> 01:05:14,600
maintenance filings which may

1856
01:05:14,600 --> 01:05:15,920
raise a variety of issues,

1857
01:05:15,920 --> 01:05:17,590
office actions in these proceedings

1858
01:05:17,590 --> 01:05:20,200
are focused solely on the issue of use

1859
01:05:20,200 --> 01:05:21,952
of the registered mark in commerce.

1860
01:05:21,960 --> 01:05:23,940
The USPTO believes that the proposed

1861
01:05:23,940 --> 01:05:24,930
two months response.

1862
01:05:24,930 --> 01:05:26,860
Deadline for these proceedings is

1863
01:05:26,860 --> 01:05:28,404
sufficient because most registrants

1864
01:05:28,404 --> 01:05:30,478
are likely to already have evidence

1865
01:05:30,478 --> 01:05:32,406
of use that is contemporaneous with

1866
01:05:32,406 --> 01:05:33,798
the relevant date at issue and

1867
01:05:33,798 --> 01:05:36,100
if if in fact such use was made.

1868
01:05:36,100 --> 01:05:36,418
So.

1869
01:05:36,418 --> 01:05:37,690
While I understand from

1870
01:05:37,690 --> 01:05:38,644
a practice perspective,

1871
01:05:38,650 --> 01:05:40,402
it's nice to have every proceeding

1872
01:05:40,402 --> 01:05:42,234
before the office be matched and

1873
01:05:42,234 --> 01:05:44,052
and so there's no surprises because

1874
01:05:44,052 --> 01:05:44,658
there are

1875
01:05:44,713 --> 01:05:45,669
different drivers,

1876
01:05:45,670 --> 01:05:47,460
different policy rationales for what

1877
01:05:47,460 --> 01:05:50,135
we're trying to do and and the speed

1878
01:05:50,135 --> 01:05:52,046
in which we're trying to do it.

1879
01:05:52,050 --> 01:05:54,150
We are having to create different

1880
01:05:54,150 --> 01:05:55,900
timelines so we understand that.

1881
01:05:55,900 --> 01:05:57,736
That that can be an issue,

1882
01:05:57,740 --> 01:05:58,960
but they are certainly,

1883
01:05:58,960 --> 01:06:00,742
you know, designed for a reason.

1884
01:06:00,742 --> 01:06:02,500
But if you have thoughts about

1885
01:06:02,556 --> 01:06:04,156
how they should be different,

1886
01:06:04,160 --> 01:06:08,669
we'd like to hear it in your formal comments.

1887
01:06:08,670 --> 01:06:10,930
So that's all from Mr.

1888
01:06:10,930 --> 01:06:13,360
Frisby and do we have Miss

1889
01:06:13,360 --> 01:06:16,340
Russell or Mr More available yet?

1890
01:06:20,460 --> 01:06:24,068
Mr. Moore uh, thank you.

1891
01:06:24,068 --> 01:06:27,649
Can you hear me now? Yes. OK Mike.

1892
01:06:30,150 --> 01:06:31,950
Thank you for having the round

1893
01:06:31,950 --> 01:06:34,229
table so it took me awhile to

1894
01:06:34,229 --> 01:06:36,257
get my browser configured to do

1895
01:06:36,257 --> 01:06:37,939
whatever it's supposed to do.

1896
01:06:37,940 --> 01:06:41,822
First comment is in cases involving

1897
01:06:41,822 --> 01:06:43,116
international registrations.

1898
01:06:45,390 --> 01:06:48,045
I'm assuming you're going to

1899
01:06:48,045 --> 01:06:51,590
notify Paipo and will you require.

1900
01:06:51,590 --> 01:06:54,964
A statement by Wypo to the USPTO

1901
01:06:54,964 --> 01:06:58,445
that HYPO has in fact sent a

1902
01:06:58,445 --> 01:07:01,337
notice to the holder of record.

1903
01:07:01,340 --> 01:07:04,035
Second comment is in in some of

1904
01:07:04,035 --> 01:07:06,876
your slides you showed an examiner

1905
01:07:06,876 --> 01:07:10,074
being involved in the petition for

1906
01:07:10,074 --> 01:07:12,740
expungement and petition for RE exam.

1907
01:07:12,740 --> 01:07:15,916
And my question is would that mean it's

1908
01:07:15,916 --> 01:07:18,817
an examiner like a post registration

1909
01:07:18,817 --> 01:07:21,853
examiner is not necessarily an attorney?

1910
01:07:21,860 --> 01:07:24,590
Or would it mean that it's

1911
01:07:24,590 --> 01:07:25,955
an examining attorney,

1912
01:07:25,960 --> 01:07:28,450
someone with a law degree and

1913
01:07:28,450 --> 01:07:31,130
third comment is on withdrawal?

1914
01:07:31,130 --> 01:07:35,828
By an attorney or registered practitioner.

1915
01:07:35,830 --> 01:07:38,868
Is there any consideration given to a

1916
01:07:38,868 --> 01:07:41,720
simple statement that you've lost contact,

1917
01:07:41,720 --> 01:07:44,312
especially after a first renewal is

1918
01:07:44,312 --> 01:07:47,391
filed and there's a period of 10

1919
01:07:47,391 --> 01:07:49,935
years between when the attorney may

1920
01:07:49,935 --> 01:07:53,362
speak to the owner of the registration

1921
01:07:53,362 --> 01:07:55,310
until something else happens?

1922
01:07:55,310 --> 01:07:58,474
In my experience, doesn't happen very often,

1923
01:07:58,480 --> 01:08:00,740
but it does happen regularly

1924
01:08:00,740 --> 01:08:03,460
that you just have no way,

1925
01:08:03,460 --> 01:08:05,200
as the attorney was.

1926
01:08:05,200 --> 01:08:07,810
Listed as the Attorney of record,

1927
01:08:07,810 --> 01:08:11,830
you have no way to get ahold of the owner.

1928
01:08:11,830 --> 01:08:13,194
The address you use,

1929
01:08:13,194 --> 01:08:15,898
the email or the postal mail comes

1930
01:08:15,898 --> 01:08:17,060
back undeliverable.

1931
01:08:17,060 --> 01:08:20,666
Email doesn't get any returns and.

1932
01:08:20,670 --> 01:08:21,894
From a practitioner standpoint

1933
01:08:21,894 --> 01:08:24,099
of being able to just say we've

1934
01:08:24,099 --> 01:08:25,649
lost contact with the owner,

1935
01:08:25,650 --> 01:08:27,834
I think would serve the public interest

1936
01:08:27,834 --> 01:08:30,978
so it does not appear that the owner is

1937
01:08:30,978 --> 01:08:33,109
getting the information from the fact

1938
01:08:33,109 --> 01:08:35,342
that an attorney of record is listed.

1939
01:08:35,350 --> 01:08:37,680
Thank you.

1940
01:08:37,680 --> 01:08:39,354
Thank you Mr.

1941
01:08:39,354 --> 01:08:42,702
Moore, with regard to your first

1942
01:08:42,702 --> 01:08:46,310
question about section 66 registrants.

1943
01:08:46,310 --> 01:08:46,616
At.

1944
01:08:46,616 --> 01:08:48,146
The institution of over preceding

1945
01:08:48,146 --> 01:08:50,189
the notice of the institution of

1946
01:08:50,189 --> 01:08:52,084
proceeding would go directly to

1947
01:08:52,084 --> 01:08:53,890
the the international registrant,

1948
01:08:53,890 --> 01:08:54,877
not to wipe.

1949
01:08:54,877 --> 01:08:55,206
Oh,

1950
01:08:55,206 --> 01:08:57,180
if the preceding was successful and

1951
01:08:57,249 --> 01:08:59,111
there was a ceasing of effect as

1952
01:08:59,111 --> 01:09:01,366
to all of the goods and services

1953
01:09:01,366 --> 01:09:03,106
or whatever was attacked and

1954
01:09:03,106 --> 01:09:04,620
and there was then cancellation,

1955
01:09:04,620 --> 01:09:06,999
then at that point we would issue a

1956
01:09:06,999 --> 01:09:09,029
notice of ceasing of effect to the

1957
01:09:09,029 --> 01:09:11,259
International Bureau of of the World

1958
01:09:11,259 --> 01:09:12,387
Intellectual Property Organization.

1959
01:09:12,390 --> 01:09:13,734
But the the communications

1960
01:09:13,734 --> 01:09:15,078
regarding the institution proceeding

1961
01:09:15,078 --> 01:09:16,540
would not go through wipe.

1962
01:09:16,540 --> 01:09:17,530
Oh, they would.

1963
01:09:17,530 --> 01:09:19,180
Go directly to the registrant.

1964
01:09:19,180 --> 01:09:21,708
I hope that makes sense on your second

1965
01:09:21,708 --> 01:09:23,860
question as to who is the examiner,

1966
01:09:23,860 --> 01:09:26,037
that's something that we're still working on.

1967
01:09:26,040 --> 01:09:27,296
Certainly these are complex

1968
01:09:27,296 --> 01:09:29,180
proceedings on on use and the

1969
01:09:29,241 --> 01:09:30,891
evidence involved so you know at

1970
01:09:30,891 --> 01:09:32,729
this point we are considering that

1971
01:09:32,729 --> 01:09:35,088
it would have to be experienced folks.

1972
01:09:35,090 --> 01:09:36,650
Attorneys who are reviewing these,

1973
01:09:36,650 --> 01:09:38,210
but we're still, you know,

1974
01:09:38,210 --> 01:09:40,303
we're not sure how many of these

1975
01:09:40,303 --> 01:09:42,227
were going to get and exactly

1976
01:09:42,227 --> 01:09:44,135
how we're going to staff it,

1977
01:09:44,140 --> 01:09:45,886
but we know that the issues

1978
01:09:45,886 --> 01:09:47,660
are going to be complex.

1979
01:09:47,660 --> 01:09:49,484
And we're prepared to deal with

1980
01:09:49,484 --> 01:09:51,433
that and and have some very

1981
01:09:51,433 --> 01:09:53,108
experienced folks working on this

1982
01:09:53,108 --> 01:09:55,479
as we roll out these procedures.

1983
01:09:55,480 --> 01:09:57,912
So I I do think that we will

1984
01:09:57,912 --> 01:09:59,560
be having a attorneys.

1985
01:09:59,560 --> 01:10:01,648
Will they be the original examining

1986
01:10:01,648 --> 01:10:03,640
attorney that looked at the file?

1987
01:10:03,640 --> 01:10:05,680
No, these would be a separate

1988
01:10:05,680 --> 01:10:07,040
unit more than likely,

1989
01:10:07,040 --> 01:10:09,420
but we're still working these things out.

1990
01:10:09,420 --> 01:10:12,140
And As for the the comments on withdrawal,

1991
01:10:12,140 --> 01:10:14,900
that's a very helpful fact pattern for us

1992
01:10:14,900 --> 01:10:17,623
to consider as we move forward, so I think.

1993
01:10:17,623 --> 01:10:19,310
I think we will have to take

1994
01:10:19,372 --> 01:10:20,962
that back and consider that as

1995
01:10:20,962 --> 01:10:23,169
we as we look at the final rule,

1996
01:10:23,170 --> 01:10:25,074
I'd love it for you to submit formal

1997
01:10:25,074 --> 01:10:26,716
comments so that we can have it

1998
01:10:26,716 --> 01:10:28,230
as part of the rulemaking record.

1999
01:10:28,230 --> 01:10:29,917
That would be very helpful to us.

2000
01:10:29,920 --> 01:10:31,120
Bob, did you want to?

2001
01:10:31,120 --> 01:10:33,451
Did you have any comments on any

2002
01:10:33,451 --> 01:10:35,857
of those issues and or correct me

2003
01:10:35,857 --> 01:10:37,855
if I got anything wrong there?

2004
01:10:37,860 --> 01:10:40,668
Yeah, I mean just on the withdrawal question,

2005
01:10:40,670 --> 01:10:42,420
of course, uh, you know,

2006
01:10:42,420 --> 01:10:44,526
we're gonna have to update our

2007
01:10:44,526 --> 01:10:45,228
forms accordingly.

2008
01:10:45,230 --> 01:10:46,990
You know, because right now,

2009
01:10:46,990 --> 01:10:48,745
if the rule says attorney

2010
01:10:48,745 --> 01:10:50,500
recognition ends at certain periods,

2011
01:10:50,500 --> 01:10:51,200
including registration,

2012
01:10:51,200 --> 01:10:53,300
then your withdrawal can simply say,

2013
01:10:53,300 --> 01:10:55,406
be, you know, recognition is ended.

2014
01:10:55,410 --> 01:10:57,867
Of course, as the speaker pointed out,

2015
01:10:57,870 --> 01:11:00,678
that's no longer going to be the case,

2016
01:11:00,680 --> 01:11:03,130
so we will need to update our

2017
01:11:03,130 --> 01:11:03,830
forms accordingly.

2018
01:11:03,830 --> 01:11:05,630
And I will just also

2019
01:11:05,630 --> 01:11:07,430
point the speaker to the.

2020
01:11:07,430 --> 01:11:08,938
Rules of professional conduct

2021
01:11:08,938 --> 01:11:10,446
which basically indicate that

2022
01:11:10,446 --> 01:11:11,801
the practitioner may withdraw

2023
01:11:11,801 --> 01:11:13,439
if the client fails to fulfill,

2024
01:11:13,440 --> 01:11:14,397
fulfill its obligations,

2025
01:11:14,397 --> 01:11:16,311
or if the representation has been

2026
01:11:16,311 --> 01:11:17,744
rendered unreasonably difficult by

2027
01:11:17,744 --> 01:11:20,460
the client, so that might be an area,

2028
01:11:20,460 --> 01:11:21,054
but again,

2029
01:11:21,054 --> 01:11:23,430
we will make sure to look at our

2030
01:11:23,501 --> 01:11:26,149
forms when we make this change to make

2031
01:11:26,149 --> 01:11:28,323
sure that all the withdrawal options

2032
01:11:28,323 --> 01:11:31,140
are are there in the form for you.

2033
01:11:36,510 --> 01:11:38,040
Thank you very much Mr.

2034
01:11:38,040 --> 01:11:39,249
Moore appreciate it.

2035
01:11:39,249 --> 01:11:42,070
Do we have Miss Russell connected yet?

2036
01:11:42,070 --> 01:11:43,695
Thank you, Miss Russell is

2037
01:11:43,695 --> 01:11:44,670
having computer difficulties,

2038
01:11:44,670 --> 01:11:46,735
so she's asked that we just go

2039
01:11:46,735 --> 01:11:49,082
ahead and skip her up and that's

2040
01:11:49,082 --> 01:11:51,170
all of the pre registered speakers.

2041
01:11:51,170 --> 01:11:53,658
So now we can move to the questions

2042
01:11:53,658 --> 01:11:55,352
that were submitted via email

2043
01:11:55,352 --> 01:11:57,676
today and so I will now turn

2044
01:11:57,750 --> 01:11:59,616
it over to Mr Robert Lebas.

2045
01:12:08,240 --> 01:12:09,810
Bob, did we want to look at some of the

2046
01:12:09,850 --> 01:12:11,418
ones that were submitted ahead of time?

2047
01:12:15,190 --> 01:12:16,265
Sorry, that's exactly what I

2048
01:12:16,265 --> 01:12:18,280
was saying, but I was muted.

2049
01:12:18,280 --> 01:12:20,160
I apologize for that. Signs.

2050
01:12:23,970 --> 01:12:26,195
Uhm, which ones did we

2051
01:12:26,195 --> 01:12:27,975
wanna cover first here?

2052
01:12:31,320 --> 01:12:37,137
The sewer sponte institution or a petition.

2053
01:12:37,140 --> 01:12:38,816
Uhm? So that question,

2054
01:12:38,816 --> 01:12:40,911
will the director enter anything

2055
01:12:40,911 --> 01:12:43,110
analogous to a third party petition

2056
01:12:43,110 --> 01:12:45,246
into the public TSDR record for

2057
01:12:45,246 --> 01:12:47,051
registration when it begins review

2058
01:12:47,051 --> 01:12:49,514
of our record for an ex parte

2059
01:12:49,514 --> 01:12:51,204
expungement or reexamination SUA sponte.

2060
01:12:51,210 --> 01:12:52,900
So that's we're talking about

2061
01:12:52,900 --> 01:12:54,252
the director initiated here?

2062
01:12:54,260 --> 01:12:56,640
Or will the office action setting forth

2063
01:12:56,640 --> 01:12:59,342
the two month response period be the

2064
01:12:59,342 --> 01:13:01,766
first notice that the register receives?

2065
01:13:01,770 --> 01:13:05,885
Uhm? Amy, I guess you want

2066
01:13:05,885 --> 01:13:08,320
me to take that one the yeah.

2067
01:13:08,320 --> 01:13:10,752
So the we haven't made a final determination

2068
01:13:10,752 --> 01:13:12,728
regarding the relevant procedures here,

2069
01:13:12,730 --> 01:13:14,500
but right now we anticipate that

2070
01:13:14,500 --> 01:13:16,466
that initial office action in the

2071
01:13:16,466 --> 01:13:17,926
director initiated expungement or

2072
01:13:17,926 --> 01:13:19,386
reexamination proceeding will be

2073
01:13:19,443 --> 01:13:21,513
the first notice that the register

2074
01:13:21,513 --> 01:13:22,893
receives regarding the proceeding.

2075
01:13:22,900 --> 01:13:23,869
But we do.

2076
01:13:23,869 --> 01:13:25,807
If anyone has any formal comments

2077
01:13:25,807 --> 01:13:26,959
on that issue,

2078
01:13:26,960 --> 01:13:28,916
we encourage you to to submit

2079
01:13:28,916 --> 01:13:30,690
your thoughts on on those.

2080
01:13:33,500 --> 01:13:38,170
AC. Next question, will a registrant

2081
01:13:38,170 --> 01:13:40,603
that files A1 application with a

2082
01:13:40,603 --> 01:13:42,948
good faith mistake as to use and

2083
01:13:42,948 --> 01:13:44,905
then subsequently amend Sue alleged

2084
01:13:44,905 --> 01:13:47,341
correct later you state without ever

2085
01:13:47,341 --> 01:13:49,690
changing its application basis to 1B,

2086
01:13:49,690 --> 01:13:51,722
nevertheless, nevertheless be vulnerable

2087
01:13:51,722 --> 01:13:53,754
to cancellation by reexamination?

2088
01:13:53,760 --> 01:13:57,558
Uhm? The answer to this is that

2089
01:13:57,558 --> 01:13:58,870
actually should not happen.

2090
01:13:58,870 --> 01:14:00,832
So in an application under trademark

2091
01:14:00,832 --> 01:14:03,300
Section 1A, the applicant may not amend

2092
01:14:03,300 --> 01:14:06,348
the dates of use to specify a date.

2093
01:14:06,350 --> 01:14:08,520
Of you said is later than the

2094
01:14:08,520 --> 01:14:10,660
filing date of the application.

2095
01:14:10,660 --> 01:14:12,096
Therefore, in that situation,

2096
01:14:12,096 --> 01:14:14,250
and the applicant would not be

2097
01:14:14,310 --> 01:14:16,045
permitted during examination to amend

2098
01:14:16,045 --> 01:14:18,558
to a later you state without first

2099
01:14:18,558 --> 01:14:21,071
amending the basis to 1B and then

2100
01:14:21,071 --> 01:14:23,220
subsequently filing an allegation of use.

2101
01:14:23,220 --> 01:14:26,940
In that case, the normal timing.

2102
01:14:26,940 --> 01:14:30,510
Of when the use has to be shown, applies.

2103
01:14:30,510 --> 01:14:33,510
I hope that answers the question.

2104
01:14:33,510 --> 01:14:34,158
Next question,

2105
01:14:34,158 --> 01:14:36,426
will there be any issue or claim

2106
01:14:36,426 --> 01:14:38,452
preclusive effect of an ex parte

2107
01:14:38,452 --> 01:14:39,768
expungement determination in favor

2108
01:14:39,768 --> 01:14:41,920
of a registrant on a subsequent

2109
01:14:41,920 --> 01:14:43,680
inner parties claim of expungement

2110
01:14:43,680 --> 01:14:46,060
as to the same registration?

2111
01:14:46,060 --> 01:14:48,760
Ah, and then the question says

2112
01:14:48,760 --> 01:14:50,930
we would not expect so.

2113
01:14:50,930 --> 01:14:52,724
Our answer is that the proposed

2114
01:14:52,724 --> 01:14:55,213
rules do not provide that in ex

2115
01:14:55,213 --> 01:14:56,449
parte expungement determination,

2116
01:14:56,450 --> 01:14:56,997
willpower,

2117
01:14:56,997 --> 01:15:00,279
preclusive effect in a subsequent inter

2118
01:15:00,279 --> 01:15:02,750
partes expungement proceeding for the TV.

2119
01:15:02,750 --> 01:15:04,988
Come see a related preclusion question.

2120
01:15:04,990 --> 01:15:07,538
Will there be any issue or claim

2121
01:15:07,538 --> 01:15:09,917
preclusive effect of an ex parte

2122
01:15:09,917 --> 01:15:11,537
determination against a registrant

2123
01:15:11,537 --> 01:15:14,443
in the event that it attempts to

2124
01:15:14,443 --> 01:15:16,463
re file on identical application?

2125
01:15:16,470 --> 01:15:17,100
For instance,

2126
01:15:17,100 --> 01:15:19,305
if a 44 Y registration is expunged

2127
01:15:19,305 --> 01:15:20,500
would be registered,

2128
01:15:20,500 --> 01:15:22,768
be able to seek another 44 registration

2129
01:15:22,768 --> 01:15:25,072
based on the same underlying foreign

2130
01:15:25,072 --> 01:15:28,033
registration for the same goods or services.

2131
01:15:28,040 --> 01:15:28,329
Uhm?

2132
01:15:28,329 --> 01:15:30,063
The proposed rules do not provide

2133
01:15:30,063 --> 01:15:32,353
that an ex parte expungement or

2134
01:15:32,353 --> 01:15:33,715
reexamination determination would

2135
01:15:33,715 --> 01:15:36,169
preclude the filing of a new

2136
01:15:36,169 --> 01:15:38,185
application with a section 44 E basis.

2137
01:15:40,890 --> 01:15:43,095
Next, is there remedy for claims of

2138
01:15:43,095 --> 01:15:44,424
inner parties expungement intended

2139
01:15:44,424 --> 01:15:46,380
to be cancellation of these specific

2140
01:15:46,380 --> 01:15:48,417
category of goods or services analogous

2141
01:15:48,417 --> 01:15:50,900
to its similarly named expert. A claim?

2142
01:15:50,900 --> 01:15:54,100
Or will it be cancellation of the entire

2143
01:15:54,184 --> 01:15:57,320
class and now it gets to the existing

2144
01:15:57,320 --> 01:16:00,112
inner part is not in use claim? Uhm?

2145
01:16:00,112 --> 01:16:02,448
The answer is that the new non use

2146
01:16:02,448 --> 01:16:04,685
ground for inter partes cancellation

2147
01:16:04,685 --> 01:16:07,035
under Trademark Act section 14

2148
01:16:07,035 --> 01:16:08,739
substantively follows the basis

2149
01:16:08,739 --> 01:16:10,643
for ex parte expungement, namely,

2150
01:16:10,643 --> 01:16:12,701
that the registered mark has never

2151
01:16:12,701 --> 01:16:14,771
been used in commerce in connection

2152
01:16:14,771 --> 01:16:17,527
with some or all the goods or services

2153
01:16:17,527 --> 01:16:19,607
were cited in the registration,

2154
01:16:19,610 --> 01:16:22,130
so an expert expungement proceeding

2155
01:16:22,130 --> 01:16:25,146
may result in cancellation of our

2156
01:16:25,146 --> 01:16:27,606
registration in part or in whole.

2157
01:16:27,610 --> 01:16:30,670
Of some or all of the goods or services,

2158
01:16:30,670 --> 01:16:32,370
depending on whether the proceeding

2159
01:16:32,370 --> 01:16:34,070
was instituted as his summer,

2160
01:16:34,070 --> 01:16:35,770
all the goods or services,

2161
01:16:35,770 --> 01:16:38,150
and whether the evidence establish is done.

2162
01:16:38,150 --> 01:16:40,089
Use us to those goods and services

2163
01:16:40,089 --> 01:16:42,212
like wise and consistent with relevant

2164
01:16:42,212 --> 01:16:44,267
TV president and dinner parties.

2165
01:16:44,270 --> 01:16:46,440
Petition to cancel based on this new

2166
01:16:46,440 --> 01:16:48,155
ground could result in cancellation

2167
01:16:48,155 --> 01:16:50,345
of particular goods or services or

2168
01:16:50,345 --> 01:16:52,461
certain classes of goods or services

2169
01:16:52,461 --> 01:16:53,789
or the entire registration,

2170
01:16:53,790 --> 01:16:55,896
depending on which goods or services

2171
01:16:55,896 --> 01:16:57,940
are covered by the pleading.

2172
01:16:57,940 --> 01:16:59,566
And whether the evidence of record

2173
01:16:59,566 --> 01:17:01,202
establishes non used as to those

2174
01:17:01,202 --> 01:17:01,958
goods or services.

2175
01:17:06,080 --> 01:17:08,688
OK, so that was a group of questions

2176
01:17:08,688 --> 01:17:11,186
that were sent to us ahead of time.

2177
01:17:11,190 --> 01:17:13,318
And then we have a few more that

2178
01:17:13,318 --> 01:17:15,311
came in ahead of time and we

2179
01:17:15,311 --> 01:17:17,439
have a whole bunch on the email.

2180
01:17:17,440 --> 01:17:19,144
So let me run through these

2181
01:17:19,144 --> 01:17:20,280
quickly in expungement proceedings.

2182
01:17:20,280 --> 01:17:21,840
Would evidence of extensive use

2183
01:17:21,840 --> 01:17:23,400
or regulatory filings outside the

2184
01:17:23,453 --> 01:17:25,067
USB considered to support a claim

2185
01:17:25,067 --> 01:17:26,529
of excusable nonuse in the US,

2186
01:17:26,530 --> 01:17:28,228
even if use in the US,

2187
01:17:28,230 --> 01:17:29,880
has not yet commenced or regulatory

2188
01:17:29,880 --> 01:17:31,908
filings in the US have not yet

2189
01:17:31,908 --> 01:17:32,490
been submitted.

2190
01:17:32,490 --> 01:17:34,478
And, of course, the answer that is,

2191
01:17:34,480 --> 01:17:36,184
it's a case by case determination

2192
01:17:36,184 --> 01:17:38,169
depending on the facts, UM, probably not.

2193
01:17:38,169 --> 01:17:39,872
But you know, I think, uh,

2194
01:17:39,872 --> 01:17:41,860
it's a it's a case by case,

2195
01:17:41,860 --> 01:17:43,630
so we really can't, uh?

2196
01:17:43,630 --> 01:17:46,606
Can't give too much of an answer there.

2197
01:17:46,610 --> 01:17:48,420
Number two with respect to

2198
01:17:48,420 --> 01:17:49,868
the ex parte proceedings,

2199
01:17:49,870 --> 01:17:52,150
did the PTO consider including provisions

2200
01:17:52,150 --> 01:17:54,937
addressing any of the following and if so,

2201
01:17:54,940 --> 01:17:56,745
why did the USPTO decide

2202
01:17:56,745 --> 01:17:57,828
against such provisions?

2203
01:17:57,830 --> 01:17:59,640
The first one being confidentiality.

2204
01:17:59,640 --> 01:18:01,565
Confidentiality concerns associated with the

2205
01:18:01,565 --> 01:18:03,868
registrants need to provide more detailed

2206
01:18:03,868 --> 01:18:05,800
evidence of use or excusable nonuse,

2207
01:18:05,800 --> 01:18:07,610
and the our response is.

2208
01:18:07,610 --> 01:18:08,693
Yeah, we are.

2209
01:18:08,693 --> 01:18:10,859
We are aware of those concerns,

2210
01:18:10,860 --> 01:18:12,630
and we welcome your comments

2211
01:18:12,630 --> 01:18:14,850
on how to deal with that.

2212
01:18:14,850 --> 01:18:17,070
The the more procedures that we.

2213
01:18:17,070 --> 01:18:19,020
We have to create and impose,

2214
01:18:19,020 --> 01:18:19,345
UM,

2215
01:18:19,345 --> 01:18:20,645
the certainly the longer

2216
01:18:20,645 --> 01:18:21,620
these proceedings take,

2217
01:18:21,620 --> 01:18:23,570
and that was not the intent.

2218
01:18:23,570 --> 01:18:25,558
So at this point we we everything

2219
01:18:25,558 --> 01:18:27,916
is above the public record and and

2220
01:18:27,916 --> 01:18:30,070
that was that was done deliberately.

2221
01:18:30,070 --> 01:18:32,020
But if you would like to

2222
01:18:32,020 --> 01:18:32,995
see something different,

2223
01:18:33,000 --> 01:18:35,478
please submit formal comments and let

2224
01:18:35,478 --> 01:18:37,980
us know. Uhm, .2 allowing a register.

2225
01:18:37,980 --> 01:18:39,882
An opportunity to submit a limited

2226
01:18:39,882 --> 01:18:41,928
response to a third party petition

2227
01:18:41,928 --> 01:18:44,434
with clear cut evidence of use or

2228
01:18:44,434 --> 01:18:46,099
highlighting flaws in the petition

2229
01:18:46,099 --> 01:18:48,301
in order to assist the director and

2230
01:18:48,301 --> 01:18:49,956
making the primer facie determination.

2231
01:18:49,960 --> 01:18:51,288
Yes, of course we.

2232
01:18:51,288 --> 01:18:52,948
We certainly have considered that

2233
01:18:52,948 --> 01:18:55,329
I'd like to hear your views on it

2234
01:18:55,329 --> 01:18:56,960
from an efficiency perspective.

2235
01:18:56,960 --> 01:18:59,168
It raises concerns in terms of trying to

2236
01:18:59,168 --> 01:19:01,289
move these proceedings through quickly,

2237
01:19:01,290 --> 01:19:03,614
but certainly we want to balance interest.

2238
01:19:03,620 --> 01:19:05,036
Again, you know, uh,

2239
01:19:05,036 --> 01:19:06,806
it's not an inner party.

2240
01:19:06,810 --> 01:19:08,700
Proceeding so it can be difficult to

2241
01:19:08,700 --> 01:19:11,082
add a lot of submissions between the

2242
01:19:11,082 --> 01:19:13,700
registrant and the petitioner and the like.

2243
01:19:13,700 --> 01:19:14,344
A third,

2244
01:19:14,344 --> 01:19:16,276
allowing a registrant to set aside

2245
01:19:16,276 --> 01:19:18,872
a default and reopen a proceeding if

2246
01:19:18,872 --> 01:19:21,167
the registrant can demonstrate that it

2247
01:19:21,167 --> 01:19:22,897
never receives the notices regarding

2248
01:19:22,897 --> 01:19:25,346
the filing of the petition or the

2249
01:19:25,346 --> 01:19:27,106
instituting institution of the proceedings.

2250
01:19:27,110 --> 01:19:28,058
In that case,

2251
01:19:28,058 --> 01:19:30,270
if there's a no response and the

2252
01:19:30,339 --> 01:19:32,601
the the the goods and services

2253
01:19:32,601 --> 01:19:34,530
are cancelled because of that,

2254
01:19:34,530 --> 01:19:36,994
a petition to the director is available.

2255
01:19:37,000 --> 01:19:38,500
As I said that,

2256
01:19:38,500 --> 01:19:42,149
that would be the remedy in this situation.

2257
01:19:42,150 --> 01:19:42,487
Lastly,

2258
01:19:42,487 --> 01:19:44,509
allowing a registrant to request an

2259
01:19:44,509 --> 01:19:46,537
extension of the two month response

2260
01:19:46,537 --> 01:19:48,777
period with the showing of good cause.

2261
01:19:48,780 --> 01:19:50,866
If folks would like to see that

2262
01:19:50,866 --> 01:19:52,586
we welcome comments on that

2263
01:19:52,586 --> 01:19:54,106
through the rulemaking process,

2264
01:19:54,110 --> 01:19:56,108
again, that will extend the proceedings.

2265
01:19:56,110 --> 01:19:57,438
Make them take longer,

2266
01:19:57,438 --> 01:19:59,098
and determining what is good.

2267
01:19:59,100 --> 01:20:01,710
'cause you know in those situations

2268
01:20:01,710 --> 01:20:04,294
again requires you know more scrutiny

2269
01:20:04,294 --> 01:20:06,989
by by the examiner and more time.

2270
01:20:06,990 --> 01:20:10,938
Uhm, OK, then with regard to.

2271
01:20:10,940 --> 01:20:13,112
3rd question with respect to the

2272
01:20:13,112 --> 01:20:14,560
X party proceedings initiated

2273
01:20:14,619 --> 01:20:16,019
by third party petition,

2274
01:20:16,020 --> 01:20:17,524
will the director consider

2275
01:20:17,524 --> 01:20:19,404
any evidence outside of the

2276
01:20:19,404 --> 01:20:21,097
petition in making the primer,

2277
01:20:21,100 --> 01:20:22,584
Facey determination will still

2278
01:20:22,584 --> 01:20:24,439
considering that we already had

2279
01:20:24,439 --> 01:20:25,907
that question still considering

2280
01:20:25,907 --> 01:20:27,637
of how to address that,

2281
01:20:27,640 --> 01:20:30,167
and have certainly happy to have your

2282
01:20:30,167 --> 01:20:32,992
comments on how far and why do you

2283
01:20:32,992 --> 01:20:35,498
think the director should look in trying

2284
01:20:35,498 --> 01:20:37,796
to evaluate the prime aphasia case.

2285
01:20:39,910 --> 01:20:42,010
Lastly, uh, let's see this is.

2286
01:20:42,010 --> 01:20:43,780
This is the patent model response

2287
01:20:43,780 --> 01:20:45,416
period comment OK under the

2288
01:20:45,416 --> 01:20:47,411
alternative proposal for office action

2289
01:20:47,411 --> 01:20:49,007
responses involve escalating fees?

2290
01:20:49,010 --> 01:20:51,327
What happens if the applicant files an

2291
01:20:51,327 --> 01:20:53,113
extension request and payment during

2292
01:20:53,113 --> 01:20:55,309
the initial two month response period,

2293
01:20:55,310 --> 01:20:58,110
but ends up needing more time than expected?

2294
01:20:58,110 --> 01:21:00,936
So again, this is that the patent model and

2295
01:21:00,936 --> 01:21:04,054
as I understand how the patent model works,

2296
01:21:04,060 --> 01:21:05,528
you're not requesting extensions

2297
01:21:05,528 --> 01:21:08,124
so much as you are filing when

2298
01:21:08,124 --> 01:21:10,074
you're ready so that you could.

2299
01:21:10,080 --> 01:21:11,580
File at the six month,

2300
01:21:11,580 --> 01:21:14,118
but you would have to have paid all of

2301
01:21:14,118 --> 01:21:16,960
the fees in order to get that six months,

2302
01:21:16,960 --> 01:21:19,642
which and they of course go up every month.

2303
01:21:19,650 --> 01:21:21,690
So I think that's how the patent model

2304
01:21:21,690 --> 01:21:23,798
worked it it's it's something that seems

2305
01:21:23,798 --> 01:21:25,930
a little bit complicated to implement,

2306
01:21:25,930 --> 01:21:27,855
but we would really like your comments

2307
01:21:27,855 --> 01:21:30,035
on it to see if that's something

2308
01:21:30,035 --> 01:21:32,210
that you all are are interested in.

2309
01:21:32,210 --> 01:21:32,782
Again, are.

2310
01:21:32,782 --> 01:21:34,784
Our main model was the three month

2311
01:21:34,784 --> 01:21:36,687
response period for all office actions?

2312
01:21:36,690 --> 01:21:38,508
Because we thought that was cleaner

2313
01:21:38,508 --> 01:21:40,748
and easier than than the other options.

2314
01:21:40,750 --> 01:21:42,297
And so we put that up front,

2315
01:21:42,300 --> 01:21:44,001
but we would love to hear what you all

2316
01:21:44,001 --> 01:21:45,609
think about all the different options.

2317
01:21:45,610 --> 01:21:47,710
And anymore that you have.

2318
01:21:47,710 --> 01:21:49,366
OK, so that's all the questions

2319
01:21:49,366 --> 01:21:50,979
that we got ahead of time.

2320
01:21:50,980 --> 01:21:53,356
And now we can turn to the questions

2321
01:21:53,356 --> 01:21:55,605
that have come into the box as

2322
01:21:55,605 --> 01:21:57,190
we have been speaking today.

2323
01:21:57,190 --> 01:22:00,058
So Bob, what's the first one?

2324
01:22:00,060 --> 01:22:00,367
OK,

2325
01:22:00,367 --> 01:22:01,902
first we have regarding registrants

2326
01:22:01,902 --> 01:22:03,928
ability to show use after being

2327
01:22:03,928 --> 01:22:05,420
challenged with an expungement.

2328
01:22:05,420 --> 01:22:07,430
Reexam proceeding is token use sufficient?

2329
01:22:07,430 --> 01:22:09,990
Or is there a minimum level that must

2330
01:22:09,990 --> 01:22:12,117
be established to overcome the action?

2331
01:22:12,120 --> 01:22:12,436
Also,

2332
01:22:12,436 --> 01:22:14,332
what if the registrant had some

2333
01:22:14,332 --> 01:22:15,810
use IE six months,

2334
01:22:15,810 --> 01:22:19,458
but then ceased use after that?

2335
01:22:19,460 --> 01:22:23,289
So I have some ideas about that.

2336
01:22:23,290 --> 01:22:24,742
You go right ahead.

2337
01:22:24,742 --> 01:22:25,468
Yeah OK,

2338
01:22:25,470 --> 01:22:28,366
so can you kind of suggested actual use,

2339
01:22:28,370 --> 01:22:31,448
so if it's the case that it's not actually

2340
01:22:31,448 --> 01:22:34,538
use and it's not going to be sufficient.

2341
01:22:34,540 --> 01:22:36,360
And as Amy mentioned before,

2342
01:22:36,360 --> 01:22:38,538
these are case by case determinations,

2343
01:22:38,540 --> 01:22:41,788
so we're going to have to see that

2344
01:22:41,788 --> 01:22:44,967
the you know we have to determine

2345
01:22:44,967 --> 01:22:47,237
that non use was was.

2346
01:22:47,240 --> 01:22:48,932
Established or or use was established

2347
01:22:48,932 --> 01:22:50,530
by preponderance of the evidence,

2348
01:22:50,530 --> 01:22:53,740
as the case may be.

2349
01:22:53,740 --> 01:22:56,506
Also, what if the resident had?

2350
01:22:56,510 --> 01:22:57,894
Six months at use,

2351
01:22:57,894 --> 01:23:00,410
six months ago with NCS or at

2352
01:23:00,410 --> 01:23:02,534
some point we have to remember

2353
01:23:02,534 --> 01:23:05,220
that both re examine expungement,

2354
01:23:05,220 --> 01:23:08,388
refer to specific use at a specific time.

2355
01:23:08,390 --> 01:23:09,970
Expungement of courses you're

2356
01:23:09,970 --> 01:23:11,945
stating that's never been used.

2357
01:23:11,950 --> 01:23:14,182
So if you can establish that

2358
01:23:14,182 --> 01:23:16,710
they use it at some point,

2359
01:23:16,710 --> 01:23:19,370
that that should be enough.

2360
01:23:19,370 --> 01:23:19,668
Uhm,

2361
01:23:19,668 --> 01:23:22,052
and then when we get into reexam proceedings,

2362
01:23:22,060 --> 01:23:24,307
the registrant's going to have to establish

2363
01:23:24,307 --> 01:23:26,550
that they used it as a relevant date.

2364
01:23:26,550 --> 01:23:28,454
So if that particular use that they

2365
01:23:28,454 --> 01:23:30,129
did use doesn't establish that,

2366
01:23:30,130 --> 01:23:33,756
then they're then they're out of luck.

2367
01:23:33,760 --> 01:23:35,866
Is there anything you wanted to add to that?

2368
01:23:35,870 --> 01:23:38,380
Amy? No, that was it. OK.

2369
01:23:40,480 --> 01:23:44,246
Uh. Next we had a question about

2370
01:23:44,246 --> 01:23:45,350
the flexible response periods,

2371
01:23:45,350 --> 01:23:47,500
and I think they were.

2372
01:23:47,500 --> 01:23:49,649
More than more than just this question

2373
01:23:49,649 --> 01:23:52,050
asked about the flexible response period.

2374
01:23:52,050 --> 01:23:54,642
But basically the question why is

2375
01:23:54,642 --> 01:23:57,242
this being considered a six month

2376
01:23:57,242 --> 01:23:59,630
period seems to be working well.

2377
01:23:59,630 --> 01:24:02,248
And then the related questions had to

2378
01:24:02,248 --> 01:24:05,207
do with the amount of time that we.

2379
01:24:05,210 --> 01:24:08,150
Ultimately ended up on in our proposal.

2380
01:24:10,210 --> 01:24:12,835
With regard to the answer this question,

2381
01:24:12,840 --> 01:24:14,970
the six month response period was

2382
01:24:14,970 --> 01:24:17,350
was built into the statute many,

2383
01:24:17,350 --> 01:24:20,118
many years ago when we were using paper

2384
01:24:20,118 --> 01:24:23,060
mail and LIFE has moved on since then and

2385
01:24:23,060 --> 01:24:26,380
we're in a much faster working environment.

2386
01:24:26,380 --> 01:24:28,630
The data shows that, you know,

2387
01:24:28,630 --> 01:24:31,638
probably if you, if you look at their,

2388
01:24:31,640 --> 01:24:33,525
how quickly applicants respond to

2389
01:24:33,525 --> 01:24:36,213
office actions a quite a few probably

2390
01:24:36,213 --> 01:24:38,409
half respond in the first month.

2391
01:24:38,410 --> 01:24:41,344
A man then? You know a quarter or respond,

2392
01:24:41,350 --> 01:24:43,006
you know, in between the first

2393
01:24:43,006 --> 01:24:44,739
month and then the 5th month,

2394
01:24:44,740 --> 01:24:46,438
and then the six months you've

2395
01:24:46,438 --> 01:24:47,570
got about another quarter.

2396
01:24:47,570 --> 01:24:48,985
So most are responding in

2397
01:24:48,985 --> 01:24:50,400
that first month or two.

2398
01:24:50,400 --> 01:24:51,820
And if that's the case,

2399
01:24:51,820 --> 01:24:54,076
then why are we holding on to the?

2400
01:24:54,080 --> 01:24:55,778
You know, why are we not?

2401
01:24:55,780 --> 01:24:57,383
It seems like it's not a big

2402
01:24:57,383 --> 01:24:59,261
impact to have have folks you know

2403
01:24:59,261 --> 01:25:00,676
they have the expectation that

2404
01:25:00,676 --> 01:25:02,638
we we need to move applications

2405
01:25:02,638 --> 01:25:04,263
through the system more quickly,

2406
01:25:04,270 --> 01:25:05,938
rather than letting them then languish

2407
01:25:05,938 --> 01:25:07,855
and and what we've heard from a

2408
01:25:07,855 --> 01:25:09,349
clearance perspective is that a lot

2409
01:25:09,349 --> 01:25:11,169
of applications are sitting there.

2410
01:25:11,170 --> 01:25:12,976
They're parked there and blocking new

2411
01:25:12,976 --> 01:25:14,930
entrants into on to the register,

2412
01:25:14,930 --> 01:25:17,030
and if we could get those through

2413
01:25:17,030 --> 01:25:18,627
faster than certainly that would

2414
01:25:18,627 --> 01:25:20,232
open up business opportunities for

2415
01:25:20,232 --> 01:25:22,130
others to get on the register.

2416
01:25:22,130 --> 01:25:24,027
So it really was a function that

2417
01:25:24,027 --> 01:25:25,236
Congress thought that moving

2418
01:25:25,236 --> 01:25:26,921
applications through the system more

2419
01:25:26,921 --> 01:25:28,964
quickly would allow new entrants into

2420
01:25:28,964 --> 01:25:30,890
the market and open up opportunities.

2421
01:25:30,890 --> 01:25:32,425
So certainly we're looking at

2422
01:25:32,425 --> 01:25:33,960
more flexible response periods in

2423
01:25:34,017 --> 01:25:35,577
order to accomplish those goals,

2424
01:25:35,580 --> 01:25:37,344
but Congress told us that we

2425
01:25:37,344 --> 01:25:39,030
can shorten to two months,

2426
01:25:39,030 --> 01:25:41,340
but we had to allow the extension.

2427
01:25:41,340 --> 01:25:43,599
All the way up to the full six months,

2428
01:25:43,600 --> 01:25:45,357
so six months is not going away.

2429
01:25:45,360 --> 01:25:46,098
It's still there.

2430
01:25:46,098 --> 01:25:47,574
It's just a matter of incentivizing

2431
01:25:47,574 --> 01:25:49,136
responses earlier so that we can

2432
01:25:49,136 --> 01:25:50,152
move applications more efficiently

2433
01:25:50,152 --> 01:25:50,879
through the system.

2434
01:25:53,680 --> 01:25:56,989
OK, moving on.

2435
01:25:56,990 --> 01:25:59,209
I realize I had skipped over one,

2436
01:25:59,210 --> 01:26:00,795
but it's also related to

2437
01:26:00,795 --> 01:26:02,380
another one we received later,

2438
01:26:02,380 --> 01:26:04,748
and it has to do with the timing

2439
01:26:04,748 --> 01:26:07,089
of the expungement petitions.

2440
01:26:07,090 --> 01:26:10,429
Uhm, so this question asks if expungement?

2441
01:26:10,430 --> 01:26:12,264
A can occur between the 3rd and

2442
01:26:12,264 --> 01:26:13,830
10th year after registration.

2443
01:26:13,830 --> 01:26:15,480
Is the assumption that the Section

2444
01:26:15,480 --> 01:26:17,539
8 was allowed for excusable nonuse?

2445
01:26:17,540 --> 01:26:19,640
Otherwise not clear how they managed

2446
01:26:19,640 --> 01:26:21,750
to keep the registration for more

2447
01:26:21,750 --> 01:26:23,688
than five years without showing use.

2448
01:26:23,690 --> 01:26:26,972
In the related question was whether

2449
01:26:26,972 --> 01:26:30,846
the registrant has to wait until the

2450
01:26:30,846 --> 01:26:34,542
first maintenance filing to file its its

2451
01:26:34,642 --> 01:26:38,097
its declaration of excusable nonuse.

2452
01:26:38,100 --> 01:26:40,090
Uhm?

2453
01:26:40,090 --> 01:26:44,500
I don't know if you want to take that Amy or,

2454
01:26:44,500 --> 01:26:47,902
well, I'll take the first one

2455
01:26:47,902 --> 01:26:50,170
from the expungement petition.

2456
01:26:50,170 --> 01:26:52,138
If a maintenance document was filed

2457
01:26:52,138 --> 01:26:53,889
and they submitted proof of use,

2458
01:26:53,890 --> 01:26:55,440
but it wasn't accurate, UM,

2459
01:26:55,440 --> 01:26:57,468
then and and a third party

2460
01:26:57,468 --> 01:26:59,428
petitioner had the evidence to show

2461
01:26:59,428 --> 01:27:01,325
that the mark was never in use,

2462
01:27:01,330 --> 01:27:03,190
that would be a situation where

2463
01:27:03,190 --> 01:27:04,430
expungement would be appropriate,

2464
01:27:04,430 --> 01:27:06,050
so it's where they've alleged use

2465
01:27:06,050 --> 01:27:08,044
to the USPTO in a maintenance filing

2466
01:27:08,044 --> 01:27:10,046
or in in the prosecution of the

2467
01:27:10,106 --> 01:27:11,870
application they've alleged use.

2468
01:27:11,870 --> 01:27:14,061
But it wasn't true and we weren't

2469
01:27:14,061 --> 01:27:16,734
able to catch it at the time because

2470
01:27:16,734 --> 01:27:18,755
we didn't have the evidence that

2471
01:27:18,755 --> 01:27:20,195
a third party had so.

2472
01:27:20,200 --> 01:27:21,034
In that situation,

2473
01:27:21,034 --> 01:27:22,980
it's not that they were not submitting

2474
01:27:23,038 --> 01:27:25,238
something and maintaining their registration,

2475
01:27:25,240 --> 01:27:27,540
it's they submitted something

2476
01:27:27,540 --> 01:27:29,840
that was not true.

2477
01:27:29,840 --> 01:27:31,984
What was the follow on to that Bob?

2478
01:27:31,990 --> 01:27:34,048
The follow on to that is basically

2479
01:27:34,048 --> 01:27:36,178
if they have excusable non use they

2480
01:27:36,178 --> 01:27:38,371
might want to hold on to their

2481
01:27:38,371 --> 01:27:40,156
goods and services and otherwise

2482
01:27:40,156 --> 01:27:42,457
they would have to wait until the

2483
01:27:42,457 --> 01:27:44,480
between the 5th and 6th year to

2484
01:27:44,542 --> 01:27:46,612
file that declaration of excusable

2485
01:27:46,612 --> 01:27:48,682
nonuse can they defensively and

2486
01:27:48,751 --> 01:27:50,947
proactively filed that declaration?

2487
01:27:50,950 --> 01:27:55,678
Prior to the normal maintenance period.

2488
01:27:55,680 --> 01:27:58,564
And I think that's something that we

2489
01:27:58,564 --> 01:28:01,129
should maybe gather some comments on.

2490
01:28:01,130 --> 01:28:03,020
Uhm, OK?

2491
01:28:03,020 --> 01:28:03,686
Sounds good,

2492
01:28:03,686 --> 01:28:06,350
but currently there is of course not a

2493
01:28:06,418 --> 01:28:08,768
mechanism for accepting a premature.

2494
01:28:08,770 --> 01:28:10,480
Non use decoration.

2495
01:28:14,300 --> 01:28:15,830
OK, next question.

2496
01:28:22,810 --> 01:28:25,034
Alright, this one I think has to do

2497
01:28:25,034 --> 01:28:27,488
with the letter of protest procedures.

2498
01:28:27,490 --> 01:28:29,045
If the USPTO examiner initially

2499
01:28:29,045 --> 01:28:30,981
issued an office action and rejected

2500
01:28:30,981 --> 01:28:32,943
the application due to a likelihood

2501
01:28:32,943 --> 01:28:34,683
of confusion with AUS registration

2502
01:28:34,683 --> 01:28:36,801
or prior pending application in such

2503
01:28:36,801 --> 01:28:38,986
rejection was traversed by the applicant,

2504
01:28:38,986 --> 01:28:41,609
will the letter of protest filed by

2505
01:28:41,609 --> 01:28:44,017
the interested party be reviewed by the

2506
01:28:44,017 --> 01:28:46,249
same examiner or a different examiner?

2507
01:28:46,250 --> 01:28:48,287
Or will a different examiner be assigned

2508
01:28:48,287 --> 01:28:50,518
to review the previous decision in new

2509
01:28:50,518 --> 01:28:52,950
evidence submitted with a letter of protest?

2510
01:28:52,950 --> 01:28:55,086
The answer to that is typically it's sent

2511
01:28:55,086 --> 01:28:57,420
back to the assigned examining attorney.

2512
01:28:57,420 --> 01:28:59,328
It's not typically sent to a

2513
01:28:59,328 --> 01:29:00,282
new examining attorney.

2514
01:29:02,330 --> 01:29:04,338
And the other question.

2515
01:29:09,840 --> 01:29:11,359
OK, that was the same question that

2516
01:29:11,359 --> 01:29:12,878
we already answered. Let me move on.

2517
01:29:21,900 --> 01:29:23,336
There was more additional

2518
01:29:23,336 --> 01:29:24,772
questions and concerns about

2519
01:29:24,772 --> 01:29:26,409
the flexible response period.

2520
01:29:26,410 --> 01:29:29,035
Why is the extension fees so high?

2521
01:29:29,040 --> 01:29:31,356
This may prejudice low income filers

2522
01:29:31,356 --> 01:29:34,307
and may force them to pay for council.

2523
01:29:34,310 --> 01:29:36,368
Will there be a sliding scale

2524
01:29:36,368 --> 01:29:38,440
for small and micro entities?

2525
01:29:49,020 --> 01:29:50,748
Bob, you might have to answer that one.

2526
01:29:50,750 --> 01:29:53,389
I don't. I'm I'm not finding it.

2527
01:29:53,390 --> 01:29:55,504
Well yeah, I mean currently we do

2528
01:29:55,504 --> 01:29:57,538
have not proposed the sliding scale,

2529
01:29:57,540 --> 01:30:00,084
but of course this is the you know,

2530
01:30:00,090 --> 01:30:02,700
the NPRM and we invite comments on on how

2531
01:30:02,700 --> 01:30:05,508
you think that might work in this context.

2532
01:30:09,020 --> 01:30:11,982
In terms of the extension fee, depending

2533
01:30:11,982 --> 01:30:14,936
on which one you're you're looking at,

2534
01:30:14,940 --> 01:30:17,894
the primary proposal I think was $125.

2535
01:30:17,900 --> 01:30:20,812
In that matches our extension fee for

2536
01:30:20,812 --> 01:30:23,399
filing a statement of use extension.

2537
01:30:28,420 --> 01:30:31,390
Alright, next question.

2538
01:30:31,390 --> 01:30:32,980
Could you spend a few moments

2539
01:30:32,980 --> 01:30:34,732
addressing how the rules may create

2540
01:30:34,732 --> 01:30:36,327
a perverse incentive to challenged

2541
01:30:36,327 --> 01:30:38,048
registrants to just file a new

2542
01:30:38,048 --> 01:30:39,464
application for the same mark and

2543
01:30:39,464 --> 01:30:41,120
the same goods or services for

2544
01:30:41,120 --> 01:30:43,019
which the mark is not in use?

2545
01:30:48,720 --> 01:30:51,060
Well, that. Uhm?

2546
01:30:53,910 --> 01:30:57,490
Let's see. Well, that may be true.

2547
01:30:57,490 --> 01:30:58,988
Isn't that always the case that if,

2548
01:30:58,990 --> 01:31:02,094
uh, if you get an office action and?

2549
01:31:02,100 --> 01:31:04,011
You can't respond to it that you

2550
01:31:04,011 --> 01:31:05,779
can just abandon and then refile.

2551
01:31:05,780 --> 01:31:07,125
And we're not necessarily tracking

2552
01:31:07,125 --> 01:31:08,815
that and and stopping you from

2553
01:31:08,815 --> 01:31:10,310
from refiling the same application.

2554
01:31:10,310 --> 01:31:12,008
So I hear what you're saying,

2555
01:31:12,010 --> 01:31:13,851
but I think that's kind of the

2556
01:31:13,851 --> 01:31:15,679
way that the system is built.

2557
01:31:15,680 --> 01:31:18,092
If you would like to see

2558
01:31:18,092 --> 01:31:20,370
a system where we block.

2559
01:31:20,370 --> 01:31:21,820
Block the person from refiling

2560
01:31:21,820 --> 01:31:23,590
the same person the same mark,

2561
01:31:23,590 --> 01:31:25,348
and how would you implement that?

2562
01:31:25,350 --> 01:31:26,235
The same person?

2563
01:31:26,235 --> 01:31:28,670
The same mark for the same goods and

2564
01:31:28,670 --> 01:31:30,777
services we we certainly would love to

2565
01:31:30,777 --> 01:31:33,255
hear if that's what you want us to do.

2566
01:31:33,260 --> 01:31:35,304
And then you know how you would,

2567
01:31:35,310 --> 01:31:37,068
how you would see implementing that.

2568
01:31:37,070 --> 01:31:40,586
Happy to take comments on that.

2569
01:31:40,590 --> 01:31:43,380
Anything to add on that Bob?

2570
01:31:43,380 --> 01:31:45,644
Uh, no I don't.

2571
01:31:45,644 --> 01:31:46,780
Uhm, OK.

2572
01:31:50,990 --> 01:31:52,409
Alright, next. Uh.

2573
01:31:52,409 --> 01:31:54,774
I note your articulated reason

2574
01:31:54,774 --> 01:31:58,011
for newly imposing a continuing

2575
01:31:58,011 --> 01:32:00,216
representation post registration.

2576
01:32:00,220 --> 01:32:02,859
It empowers the PTO to treat last

2577
01:32:02,859 --> 01:32:05,657
known council as counsel of record to,

2578
01:32:05,660 --> 01:32:07,778
for example, give notice of actions

2579
01:32:07,778 --> 01:32:09,940
under the new cancellation proceedings.

2580
01:32:09,940 --> 01:32:11,880
This potentially could impose an

2581
01:32:11,880 --> 01:32:13,432
onerous obligation on Council,

2582
01:32:13,440 --> 01:32:15,284
possibly impacting, for example,

2583
01:32:15,284 --> 01:32:17,128
subsequent claim of conflicts

2584
01:32:17,128 --> 01:32:20,650
years after that. Uhm?

2585
01:32:20,650 --> 01:32:22,456
Where there's been no service requested or

2586
01:32:22,456 --> 01:32:24,350
performed for the resident by that Council,

2587
01:32:24,350 --> 01:32:25,935
this may particularly impact situation

2588
01:32:25,935 --> 01:32:28,119
for the lawyer has only been retained

2589
01:32:28,119 --> 01:32:29,763
to register one or two marks.

2590
01:32:29,770 --> 01:32:32,030
And has no ongoing relationship

2591
01:32:32,030 --> 01:32:33,386
with the registrant.

2592
01:32:33,390 --> 01:32:36,295
A smaller practices may thus

2593
01:32:36,295 --> 01:32:38,038
be particularly impacted.

2594
01:32:38,040 --> 01:32:40,098
I understand this is a new requirement.

2595
01:32:40,100 --> 01:32:41,570
This new requirement allows Council

2596
01:32:41,570 --> 01:32:42,846
to withdraw, revoke, proactively.

2597
01:32:42,846 --> 01:32:44,904
Do you contemplate that the rules

2598
01:32:44,904 --> 01:32:46,898
allowing counsel to withdraw upon issuance?

2599
01:32:46,900 --> 01:32:48,922
Of the registration be more pro

2600
01:32:48,922 --> 01:32:50,830
form are different from current,

2601
01:32:50,830 --> 01:32:53,435
more onerous rules for withdrawal

2602
01:32:53,435 --> 01:32:54,477
or revocation.

2603
01:32:54,480 --> 01:32:55,108
So again,

2604
01:32:55,108 --> 01:32:57,620
I think this gets to the question of,

2605
01:32:57,620 --> 01:32:58,212
you know,

2606
01:32:58,212 --> 01:32:59,988
will our forms be updated accordingly

2607
01:32:59,988 --> 01:33:02,194
when we make this change to make

2608
01:33:02,194 --> 01:33:03,754
sure that we're contemplating all

2609
01:33:03,810 --> 01:33:05,425
the potential reasons for withdrawal

2610
01:33:05,425 --> 01:33:07,305
and the answer there is yes.

2611
01:33:07,305 --> 01:33:07,835
And again,

2612
01:33:07,835 --> 01:33:09,425
this is all within the context

2613
01:33:09,425 --> 01:33:11,198
of the professional rules of

2614
01:33:11,198 --> 01:33:13,003
conduct in your obligations there.

2615
01:33:17,940 --> 01:33:20,020
We have one more.

2616
01:33:20,020 --> 01:33:22,174
Yes, if the reason for changing

2617
01:33:22,174 --> 01:33:24,430
response period to three months is

2618
01:33:24,430 --> 01:33:26,310
to move the applications along,

2619
01:33:26,310 --> 01:33:28,790
why would there be a proposal to split

2620
01:33:28,790 --> 01:33:30,393
examination in formal examination

2621
01:33:30,393 --> 01:33:32,229
and then formal examination?

2622
01:33:34,620 --> 01:33:36,402
This is the EU model that

2623
01:33:36,402 --> 01:33:36,996
appears inefficient.

2624
01:33:40,380 --> 01:33:42,390
We're looking at a bunch of

2625
01:33:42,390 --> 01:33:44,677
different options of how to improve

2626
01:33:44,677 --> 01:33:46,437
the efficiency of examination,

2627
01:33:46,440 --> 01:33:48,638
and certainly I think you might all

2628
01:33:48,638 --> 01:33:51,010
be aware of the increase application

2629
01:33:51,010 --> 01:33:53,270
numbers that we're getting a.

2630
01:33:53,270 --> 01:33:55,862
It's a we're seeing quite a quite a

2631
01:33:55,862 --> 01:33:58,949
surge in applications that are coming in,

2632
01:33:58,950 --> 01:34:01,449
and we're trying to determine how to

2633
01:34:01,449 --> 01:34:03,500
improve the efficiency of examination,

2634
01:34:03,500 --> 01:34:06,349
improve the efficiency of the office and

2635
01:34:06,349 --> 01:34:08,909
and different models that will allow us.

2636
01:34:08,910 --> 01:34:11,655
To do that, and everything is on the table.

2637
01:34:11,660 --> 01:34:14,540
And so as we we looked at these

2638
01:34:14,540 --> 01:34:15,960
response period options.

2639
01:34:15,960 --> 01:34:18,212
You know, or as I said, our first,

2640
01:34:18,212 --> 01:34:19,631
our first option was, OK,

2641
01:34:19,631 --> 01:34:21,377
let's just go with three months

2642
01:34:21,377 --> 01:34:22,730
response period extendable one time,

2643
01:34:22,730 --> 01:34:25,957
up to six months and keep it.

2644
01:34:25,960 --> 01:34:27,440
Keep it easy and simple,

2645
01:34:27,440 --> 01:34:29,568
but as we were also at the same

2646
01:34:29,568 --> 01:34:31,568
time doing TMI rule package work,

2647
01:34:31,570 --> 01:34:33,628
we were also dealing with the surgeon.

2648
01:34:33,630 --> 01:34:34,497
We thought, well,

2649
01:34:34,497 --> 01:34:37,170
why don't we put other options in front of

2650
01:34:37,170 --> 01:34:39,530
stakeholders and see what they have to say?

2651
01:34:39,530 --> 01:34:41,455
If they think that would be an

2652
01:34:41,455 --> 01:34:43,070
interesting way to move forward.

2653
01:34:43,070 --> 01:34:45,368
What if we were able to, you know,

2654
01:34:45,368 --> 01:34:46,688
deal with formalities and it

2655
01:34:46,688 --> 01:34:48,379
by a set of formalities,

2656
01:34:48,380 --> 01:34:50,445
examiners or or that sort of thing.

2657
01:34:50,450 --> 01:34:52,508
You know the easier issues up front.

2658
01:34:52,510 --> 01:34:53,002
Handle those,

2659
01:34:53,002 --> 01:34:54,478
get everything in line and then

2660
01:34:54,478 --> 01:34:56,210
in a substantive examination.

2661
01:34:56,210 --> 01:34:57,498
Have the examining attorney's

2662
01:34:57,498 --> 01:34:59,430
focus on the substance of refusals

2663
01:34:59,489 --> 01:35:00,697
and not the formalities,

2664
01:35:00,700 --> 01:35:01,045
refusals.

2665
01:35:01,045 --> 01:35:02,770
We know countries around the

2666
01:35:02,770 --> 01:35:04,488
world actually like you said

2667
01:35:04,488 --> 01:35:06,156
in the EU and other countries,

2668
01:35:06,160 --> 01:35:07,870
they split formalities and substantive

2669
01:35:07,870 --> 01:35:09,580
examination and two different examining

2670
01:35:09,631 --> 01:35:11,299
core and and two different procedures.

2671
01:35:11,300 --> 01:35:13,220
Is that something that US stakeholders

2672
01:35:13,220 --> 01:35:14,830
think would be useful here?

2673
01:35:14,830 --> 01:35:16,756
I think your answer is no

2674
01:35:16,756 --> 01:35:18,040
inefficiency in the EU,

2675
01:35:18,040 --> 01:35:20,614
but we would love for for any input on

2676
01:35:20,614 --> 01:35:23,005
that as to how to move applications

2677
01:35:23,005 --> 01:35:25,100
more quickly and for those who,

2678
01:35:25,100 --> 01:35:27,458
for instance, you know or are.

2679
01:35:27,460 --> 01:35:28,890
Filing applications where they're not,

2680
01:35:28,890 --> 01:35:30,026
including all the information

2681
01:35:30,026 --> 01:35:30,878
in the application.

2682
01:35:30,880 --> 01:35:33,240
Why should that be sent to an examining

2683
01:35:33,240 --> 01:35:35,158
attorney to deal with all of that?

2684
01:35:35,160 --> 01:35:37,148
Why don't we have that handled separately?

2685
01:35:37,150 --> 01:35:38,914
But the only way to handle it

2686
01:35:38,914 --> 01:35:40,361
separately and make the requirements

2687
01:35:40,361 --> 01:35:42,566
is to have a flexible response period.

2688
01:35:42,570 --> 01:35:42,842
Otherwise,

2689
01:35:42,842 --> 01:35:44,746
every time we ask you to change

2690
01:35:44,746 --> 01:35:45,990
something in your address,

2691
01:35:45,990 --> 01:35:48,270
we have to give you a six month

2692
01:35:48,270 --> 01:35:48,840
response period.

2693
01:35:48,840 --> 01:35:49,134
UM.

2694
01:35:49,134 --> 01:35:50,016
And so it,

2695
01:35:50,016 --> 01:35:52,260
it kind of didn't make sense to to,

2696
01:35:52,260 --> 01:35:52,535
UM,

2697
01:35:52,535 --> 01:35:54,185
it doesn't make sense if you're

2698
01:35:54,185 --> 01:35:55,683
trying to knockout the formalities

2699
01:35:55,683 --> 01:35:57,825
examination first to give you a whole.

2700
01:35:57,830 --> 01:36:00,188
Six months and then come back with you know,

2701
01:36:00,190 --> 01:36:00,712
substantive examination.

2702
01:36:00,712 --> 01:36:02,017
Unless we could shorten it,

2703
01:36:02,020 --> 01:36:03,665
unless we could shorten it and get

2704
01:36:03,665 --> 01:36:05,688
get it all through faster that was.

2705
01:36:05,690 --> 01:36:07,226
That was one of the drivers

2706
01:36:07,226 --> 01:36:08,570
in US thinking about this,

2707
01:36:08,570 --> 01:36:10,666
but we have two different heads going on.

2708
01:36:10,670 --> 01:36:11,980
We've got the TMI implementation.

2709
01:36:11,980 --> 01:36:13,290
We've got the, you know,

2710
01:36:13,290 --> 01:36:14,928
the surge coming in and we're

2711
01:36:14,928 --> 01:36:16,768
trying to figure out if we can

2712
01:36:16,768 --> 01:36:18,371
have one one model that solves 2

2713
01:36:18,434 --> 01:36:19,310
problems for us.

2714
01:36:19,310 --> 01:36:21,179
And so we're looking for your input

2715
01:36:21,179 --> 01:36:23,239
to see what you think would be a.

2716
01:36:23,240 --> 01:36:25,240
You know, the the way to get get

2717
01:36:25,240 --> 01:36:26,656
things through the system and

2718
01:36:26,656 --> 01:36:28,086
make sure that new entrants.

2719
01:36:28,090 --> 01:36:30,370
Get on the register faster.

2720
01:36:30,370 --> 01:36:32,596
So I hope that answers the question.

2721
01:36:36,220 --> 01:36:39,778
Alright, uh C one came in.

2722
01:36:39,780 --> 01:36:43,497
While we were answering that one and it was.

2723
01:36:43,500 --> 01:36:46,132
Will the estoppel effect have a time

2724
01:36:46,132 --> 01:36:48,990
limit or will it be a permanent bar?

2725
01:36:48,990 --> 01:36:50,366
Is an interesting question.

2726
01:36:50,366 --> 01:36:52,842
It is permanent in the sense in

2727
01:36:52,842 --> 01:36:54,562
the context of these proceedings

2728
01:36:54,562 --> 01:36:56,745
that once we've kind of reached

2729
01:36:56,745 --> 01:36:58,221
that final determination of

2730
01:36:58,221 --> 01:37:01,356
whether there was use or non use,

2731
01:37:01,356 --> 01:37:04,116
you can't bring another action.

2732
01:37:04,120 --> 01:37:06,640
For on that same basis.

2733
01:37:06,640 --> 01:37:09,006
But I'll also note that these are

2734
01:37:09,006 --> 01:37:11,618
kind of limited by the Statute anyway,

2735
01:37:11,620 --> 01:37:14,230
so after a certain period you

2736
01:37:14,230 --> 01:37:15,970
can't file these so.

2737
01:37:15,970 --> 01:37:19,468
I hope that answers the question.

2738
01:37:19,470 --> 01:37:21,584
You can always go to the trademark

2739
01:37:21,584 --> 01:37:23,330
trial and appeal board though.

2740
01:37:23,330 --> 01:37:25,256
That does not bar the they

2741
01:37:25,256 --> 01:37:26,219
ex parte proceedings.

2742
01:37:26,220 --> 01:37:28,572
Do not bar inter partes proceedings on

2743
01:37:28,572 --> 01:37:30,708
the same registration for the same goods.

2744
01:37:35,980 --> 01:37:38,516
OK, is that all that we have here?

2745
01:37:47,380 --> 01:37:50,108
Bob, do you have anything more coming in?

2746
01:37:50,110 --> 01:37:53,080
I don't have anything more.

2747
01:37:53,080 --> 01:37:54,688
OK, there's anyone with their hand

2748
01:37:54,688 --> 01:37:56,277
raised or anything like that and

2749
01:37:56,277 --> 01:37:57,663
they want to submit a question,

2750
01:37:57,670 --> 01:37:59,483
but I I think we're it seems

2751
01:37:59,483 --> 01:38:00,480
like we're wrapping up.

2752
01:38:05,340 --> 01:38:07,060
Yes, it is, may I?

2753
01:38:07,060 --> 01:38:10,614
It is OK Allison. Uhm, yes,

2754
01:38:10,614 --> 01:38:12,666
that that issue with the stoppel.

2755
01:38:12,670 --> 01:38:14,280
I thought that that's relevant

2756
01:38:14,280 --> 01:38:16,324
to the interplay with the post

2757
01:38:16,324 --> 01:38:17,796
registration audit as well,

2758
01:38:17,800 --> 01:38:19,455
because if you're not supposed

2759
01:38:19,455 --> 01:38:21,827
to be able to challenge the goods

2760
01:38:21,827 --> 01:38:23,452
that were already challenged as

2761
01:38:23,452 --> 01:38:25,660
part of the non use proceeding,

2762
01:38:25,660 --> 01:38:27,660
you know a lot of times there's a

2763
01:38:27,660 --> 01:38:29,534
lot of synonymous or overlapping

2764
01:38:29,534 --> 01:38:32,156
goods and services in a registration,

2765
01:38:32,160 --> 01:38:34,477
and I think it could get into

2766
01:38:34,477 --> 01:38:36,260
some difficult issues of parsing.

2767
01:38:36,260 --> 01:38:38,288
Whether you know looking at something

2768
01:38:38,288 --> 01:38:40,100
that's in a different phrase.

2769
01:38:40,100 --> 01:38:42,109
Separated by semi colons is in fact

2770
01:38:42,109 --> 01:38:44,057
already been addressed in the earlier thing.

2771
01:38:44,060 --> 01:38:44,344
Secondly,

2772
01:38:44,344 --> 01:38:46,048
if the flexible response period is

2773
01:38:46,048 --> 01:38:47,740
supposed to make things go faster,

2774
01:38:47,740 --> 01:38:49,908
it seems to me that the patent model

2775
01:38:49,908 --> 01:38:51,374
produces uncertainty about what the

2776
01:38:51,374 --> 01:38:53,120
status of prior pending applications is.

2777
01:38:53,120 --> 01:38:54,530
'cause as I understand it,

2778
01:38:54,530 --> 01:38:55,945
they would be marked abandoned

2779
01:38:55,945 --> 01:38:56,794
after two months,

2780
01:38:56,800 --> 01:38:58,444
but they would have up until

2781
01:38:58,444 --> 01:39:00,190
six months to file an answer,

2782
01:39:00,190 --> 01:39:02,094
and so it seems like unless you're

2783
01:39:02,094 --> 01:39:04,157
going to wait the whole six months,

2784
01:39:04,160 --> 01:39:05,846
you know being blocked by prior,

2785
01:39:05,850 --> 01:39:07,894
pending or not going to go faster

2786
01:39:07,894 --> 01:39:09,400
'cause you're still going to

2787
01:39:09,400 --> 01:39:10,820
be waiting till six months.

2788
01:39:10,820 --> 01:39:12,908
Or you're going to let them go and

2789
01:39:12,908 --> 01:39:14,989
then they're gonna have to pull them

2790
01:39:14,989 --> 01:39:17,160
back when the response finally gets filed.

2791
01:39:17,160 --> 01:39:20,340
It perhaps the six months.

2792
01:39:20,340 --> 01:39:23,168
Thing that I forgot to mention previously,

2793
01:39:23,170 --> 01:39:25,588
but it's very important to me,

2794
01:39:25,590 --> 01:39:28,390
is if you do carry out this

2795
01:39:28,390 --> 01:39:31,955
proposal to wipe all of the attorney

2796
01:39:31,955 --> 01:39:34,227
information from the database.

2797
01:39:34,230 --> 01:39:36,390
The time that the rule changes.

2798
01:39:36,390 --> 01:39:38,190
Please do not remove the

2799
01:39:38,190 --> 01:39:39,270
attorney docket numbers.

2800
01:39:39,270 --> 01:39:41,694
It's one thing for us to go back

2801
01:39:41,694 --> 01:39:44,449
in and put our name and address

2802
01:39:44,449 --> 01:39:46,105
and bar information in,

2803
01:39:46,110 --> 01:39:47,910
but that's all static information.

2804
01:39:47,910 --> 01:39:51,150
We can put it in 300 at a time,

2805
01:39:51,150 --> 01:39:53,740
but having to put back in individual

2806
01:39:53,740 --> 01:39:55,942
unique matter numbers is a whole

2807
01:39:55,942 --> 01:39:57,982
different order of magnitude of work.

2808
01:39:57,990 --> 01:40:00,244
And I don't think there was anything

2809
01:40:00,244 --> 01:40:03,027
in the NPRM about the proposed burden.

2810
01:40:03,030 --> 01:40:04,402
Hourly or cost wise.

2811
01:40:04,402 --> 01:40:06,117
On trademark owners and their

2812
01:40:06,117 --> 01:40:08,318
attorneys of having to restore that

2813
01:40:08,318 --> 01:40:10,118
attorney information to the database.

2814
01:40:10,120 --> 01:40:10,800
Thank you.

2815
01:40:13,680 --> 01:40:15,090
Very helpful Allison.

2816
01:40:15,090 --> 01:40:17,910
Thank you for for that information.

2817
01:40:17,910 --> 01:40:19,380
I'll take that under advisement.

2818
01:40:21,870 --> 01:40:24,158
Anything there you want to respond to Bob?

2819
01:40:26,610 --> 01:40:28,752
Uhm, yeah I I'm not sure I

2820
01:40:28,752 --> 01:40:30,270
understood the last comment.

2821
01:40:30,270 --> 01:40:32,268
I think when we do transition,

2822
01:40:32,270 --> 01:40:34,682
if we if this rule does go into effect

2823
01:40:34,682 --> 01:40:36,927
for the attorney recognition rule,

2824
01:40:36,930 --> 01:40:39,051
I think our proposal was to leave

2825
01:40:39,051 --> 01:40:40,352
in the correspondence information

2826
01:40:40,352 --> 01:40:42,669
for the attorney but delete them as

2827
01:40:42,669 --> 01:40:44,800
the Attorney of record during that

2828
01:40:44,800 --> 01:40:46,565
transition transition period where we

2829
01:40:46,565 --> 01:40:50,014
want people to come in and re appear.

2830
01:40:50,020 --> 01:40:52,168
It specifically says the docket numbers.

2831
01:40:52,170 --> 01:40:53,965
Yeah, yeah, you're proposing to

2832
01:40:53,965 --> 01:40:55,760
delete the docket numbers too.

2833
01:40:55,760 --> 01:40:57,560
Yes, keep our correspondents info.

2834
01:40:57,560 --> 01:41:01,630
But my favorite thing else, OK?

2835
01:41:01,630 --> 01:41:03,240
OK, we look forward to your comments,

2836
01:41:03,240 --> 01:41:03,470
Allison.

2837
01:41:05,930 --> 01:41:06,680
As always.

2838
01:41:10,290 --> 01:41:12,780
OK, anything else come in?

2839
01:41:14,900 --> 01:41:16,990
Now that's all the questions

2840
01:41:16,990 --> 01:41:19,008
we've received for today. OK.

2841
01:41:19,008 --> 01:41:22,050
I'm going to turn it back over to you

2842
01:41:22,134 --> 01:41:25,347
to Tasha as the mistress of ceremonies.

2843
01:41:25,350 --> 01:41:27,352
Thank you, Amy and thank you to

2844
01:41:27,352 --> 01:41:29,394
everyone on the call for your

2845
01:41:29,394 --> 01:41:30,890
questions and comments today.

2846
01:41:30,890 --> 01:41:32,829
Now I will turn it over to

2847
01:41:32,829 --> 01:41:34,494
Deputy Chief Judge Mark Fuhrman

2848
01:41:34,494 --> 01:41:36,424
for to provide closing remarks.

2849
01:41:41,260 --> 01:41:42,895
Thank you, Tasha.

2850
01:41:42,895 --> 01:41:45,075
Can everyone hear me?

2851
01:41:45,080 --> 01:41:47,250
That's OK, I wanted to make a

2852
01:41:47,250 --> 01:41:49,080
couple of quick points here.

2853
01:41:49,080 --> 01:41:51,352
One is I want to reinforce the message

2854
01:41:51,352 --> 01:41:53,408
you heard throughout this program,

2855
01:41:53,410 --> 01:41:55,734
mainly from Amy, but also from Bob.

2856
01:41:55,740 --> 01:41:57,812
We really need your input and we

2857
01:41:57,812 --> 01:41:59,729
really need your formal comments,

2858
01:41:59,730 --> 01:42:01,728
so please provide those to us.

2859
01:42:01,730 --> 01:42:03,400
The more input we received,

2860
01:42:03,400 --> 01:42:05,724
the better the ultimate rules will be.

2861
01:42:05,730 --> 01:42:07,390
You guys are out there.

2862
01:42:07,390 --> 01:42:09,686
You know handling the the impact of

2863
01:42:09,686 --> 01:42:12,272
our rules and procedures so you know

2864
01:42:12,272 --> 01:42:14,564
and you can foresee certain things

2865
01:42:14,634 --> 01:42:16,776
that that might not occur to us.

2866
01:42:16,780 --> 01:42:19,684
And so the more information you can provide,

2867
01:42:19,690 --> 01:42:21,790
the less bumpy the road will

2868
01:42:21,790 --> 01:42:23,765
be once these new proceedings

2869
01:42:23,765 --> 01:42:26,240
and changes go into effect.

2870
01:42:26,240 --> 01:42:28,389
And then the second point I want

2871
01:42:28,389 --> 01:42:30,786
to make is just really kind of

2872
01:42:30,786 --> 01:42:32,886
enclosing is to return to the

2873
01:42:32,960 --> 01:42:35,105
theme that Commissioner good are

2874
01:42:35,105 --> 01:42:37,938
presented at the very start of this,

2875
01:42:37,938 --> 01:42:40,002
and that is the importance indeed

2876
01:42:40,002 --> 01:42:42,387
almost the sanctity of the register.

2877
01:42:42,390 --> 01:42:45,118
It is the the the bedrock of our

2878
01:42:45,118 --> 01:42:47,236
trademark system in the United States

2879
01:42:47,236 --> 01:42:49,783
and it's critical that it is as

2880
01:42:49,783 --> 01:42:51,928
accurate and reliable as possible.

2881
01:42:51,930 --> 01:42:54,779
It's been an ongoing concern for quite

2882
01:42:54,779 --> 01:42:57,039
sometime about registrations on the register.

2883
01:42:57,040 --> 01:42:58,132
Shouldn't be there.

2884
01:42:58,132 --> 01:42:59,588
The board in fact,

2885
01:42:59,590 --> 01:43:02,229
a few years ago implemented a pilot

2886
01:43:02,229 --> 01:43:03,826
program and expedited cancellation

2887
01:43:03,826 --> 01:43:06,208
pilot for this very reason to

2888
01:43:06,208 --> 01:43:08,682
look into whether or not we could

2889
01:43:08,682 --> 01:43:10,506
attempt to remove some of this

2890
01:43:10,510 --> 01:43:11,596
Deadwood more efficiently.

2891
01:43:11,596 --> 01:43:14,879
We had kind of mixed results of that pilot,

2892
01:43:14,880 --> 01:43:17,418
but one of the things we noticed was a

2893
01:43:17,418 --> 01:43:19,998
very high default rate and cancellation

2894
01:43:19,998 --> 01:43:22,228
petitions involving claims of non

2895
01:43:22,297 --> 01:43:24,699
use or vandament 50% or higher in

2896
01:43:24,699 --> 01:43:27,364
some cases up to 60% default rates.

2897
01:43:27,364 --> 01:43:29,474
That's a message that Chief

2898
01:43:29,474 --> 01:43:31,670
Judge Rogers and I have been.

2899
01:43:31,670 --> 01:43:32,376
You know,

2900
01:43:32,376 --> 01:43:33,435
making pretty consistently

2901
01:43:33,435 --> 01:43:35,200
for about two years now.

2902
01:43:35,200 --> 01:43:36,970
And it's an important point.

2903
01:43:36,970 --> 01:43:37,662
And I,

2904
01:43:37,662 --> 01:43:39,738
I think it it reinforces the

2905
01:43:39,738 --> 01:43:41,561
approach that Congress took in

2906
01:43:41,561 --> 01:43:43,679
the TMI to expand even more.

2907
01:43:43,680 --> 01:43:45,745
The ways to clean up the register

2908
01:43:45,745 --> 01:43:47,854
so the the involvement of the

2909
01:43:47,854 --> 01:43:49,769
board in these proceedings is

2910
01:43:49,769 --> 01:43:52,148
going to be primarily to appeal,

2911
01:43:52,150 --> 01:43:53,910
you know, to handle appeals.

2912
01:43:53,910 --> 01:43:56,381
And we do have the new expungement

2913
01:43:56,381 --> 01:43:57,472
proceeding, but it's all.

2914
01:43:57,472 --> 01:44:00,520
Part of a whole and so we we look forward

2915
01:44:00,520 --> 01:44:02,635
to implementing these new proceedings.

2916
01:44:02,640 --> 01:44:05,008
We welcome all of your input and we

2917
01:44:05,008 --> 01:44:07,660
all are in this together to try to

2918
01:44:07,660 --> 01:44:09,878
get the best register that we can.

2919
01:44:09,880 --> 01:44:10,828
But thank you.

2920
01:44:14,430 --> 01:44:17,286
Thank you. We did receive one last

2921
01:44:17,286 --> 01:44:19,812
question come while Deputy Chief Judge

2922
01:44:19,812 --> 01:44:22,260
Thurman was speaking and that was

2923
01:44:22,260 --> 01:44:24,877
a question about when do we expect

2924
01:44:24,877 --> 01:44:27,275
to put out the final rule package?

2925
01:44:27,275 --> 01:44:31,016
We do not have a set date to put out the

2926
01:44:31,016 --> 01:44:33,975
final rule package comments or do on the

2927
01:44:33,975 --> 01:44:36,782
notice of proposed rulemaking by July 19th.

2928
01:44:36,790 --> 01:44:39,710
So at that point.

2929
01:44:39,710 --> 01:44:41,875
Policy team led by Robert

2930
01:44:41,875 --> 01:44:43,607
Lavash and Amy Cotton,

2931
01:44:43,610 --> 01:44:46,220
will review the comments and begin

2932
01:44:46,220 --> 01:44:48,852
working on the final rulemaking and

2933
01:44:48,852 --> 01:44:52,076
the other date that I will point out

2934
01:44:52,164 --> 01:44:55,265
is that the Statute requires us to

2935
01:44:55,265 --> 01:44:57,818
implement for letters of protest and

2936
01:44:57,818 --> 01:44:59,848
the non use cancellation provisions

2937
01:44:59,848 --> 01:45:02,230
by one year after enactment,

2938
01:45:02,230 --> 01:45:05,720
which is December 27th, 2021.

2939
01:45:05,720 --> 01:45:08,246
Updates will be of course provided

2940
01:45:08,246 --> 01:45:09,509
on our website,

2941
01:45:09,510 --> 01:45:12,910
and so we encourage you all to subscribe

2942
01:45:12,910 --> 01:45:16,249
to trademark alerts if you are not already.

2943
01:45:16,250 --> 01:45:19,029
UM, also on our website as information

2944
01:45:19,029 --> 01:45:20,880
about providing formal comments.

2945
01:45:20,880 --> 01:45:23,862
Formal comments will be part of the

2946
01:45:23,862 --> 01:45:26,768
official record and as I just mentioned,

2947
01:45:26,770 --> 01:45:28,454
reviewed and responded to

2948
01:45:28,454 --> 01:45:30,138
in the final rulemaking.

2949
01:45:30,140 --> 01:45:33,300
They are due by July 19th and can

2950
01:45:33,300 --> 01:45:36,069
be submitted at www.regulationsgov.

2951
01:45:36,070 --> 01:45:38,730
A link to the slides from today's

2952
01:45:38,730 --> 01:45:40,839
presentation are posted at the bottom

2953
01:45:40,839 --> 01:45:42,939
of the TMI page on our website.

2954
01:45:42,940 --> 01:45:44,565
This roundtable was recorded and

2955
01:45:44,565 --> 01:45:46,562
the video will be made available

2956
01:45:46,562 --> 01:45:48,711
on the same page on our website

2957
01:45:48,711 --> 01:45:50,280
within two to three weeks.

2958
01:45:50,280 --> 01:45:52,104
We will email links to everyone

2959
01:45:52,104 --> 01:45:53,790
that registered for today's program.

2960
01:45:53,790 --> 01:45:55,380
Once the video is available.

2961
01:45:55,380 --> 01:45:57,318
Thank you all once again and

2962
01:45:57,318 --> 01:45:59,529
have a great rest of your day.