Good afternoon, thank you all for
attending today's roundtable on the
Trademark Modernization Act or TM.
A notice of proposed rulemaking.
The slides from today's presentation are
posted on the TMI page on our website.
This roundtable is being recorded and
will be made available for viewing on
our website within two to three weeks.
If you encounter any technical
difficulties during the Roundtable,
please email virtual events
at uspto.gov for assistance.
If you have questions for the panel,
please send an email to TM
underscore webinar at USPTO Gov.
The panel will answer as many questions
as possible during today's session.
Now I will turn it over to the
Commissioner for trademarks.
David Gooder to provide opening
remarks Commissioner Gutter.
Thanks Joshua very much,
good afternoon everyone in a few minutes
you'll be hearing from Amy Cotton,
the deputy Commissioner for trademark
examination policy at the USPTO.
Amy is going to take you through
the proposed rules for the TMI
in order to implement it.
Before she does, though,
however,
I wanted to share with you a few
thoughts of mine about the TMI.
If you haven't already heard this
year marks the 75th anniversary of
the enactment of the Lanham Act.
Are trademark law has stood the test of time.
Important amendments over the years
have been few, but when they have been,
they've been significant.
This is the case with the TMI.
When the left while the latter window,
Adam actress pass gives me the
world was a very different place,
however,
and the challenges we face today
with regard to the integrity of
the register and its registrations
simply weren't part of the landscape,
so that EMA has come along at
an opportune time.
And in implementing we wanted to
do two things a bit differently
than than we've done in the past.
First,
we sought comments and input from
stakeholders and our customers early
in the process to get their initial.
Thoughts about implementation.
We included many of those
comments in the draft.
Second of all,
you'll notice when you've read it
that we included in the draft a
number of options for some of the
rules and procedures are thought was
that by doing this you'll be able to
consider some of the things we were
considering and be able to provide
productive comments in areas where
more than one good option is possible.
In this way,
when the final rule is published,
we're confident that the rules
will have been well thought.
Through will be effective and in
generally supported by the TM community.
As I prepared my remarks for today,
my thoughts turned to the protection
of our trademark register,
which is one of the bedrocks
of the trademark ecosystem.
Quite simply,
the integrity of the register
ensures that brand owners are able
to protect their IP and succeed
in the US and global markets.
It's for this reason that protecting the
integrity of the US trademark register
is and will remain for some time.
One of our absolute top priorities.
In that vein, we welcome the TMI
as we believe it will contribute
in a significant way to that goal.
So enough for me.
Let me now turn it over to Amy
Cotton or Deputy Commissioner for
trademark examination policy, Amy.
Thanks Dave, good afternoon
ladies and gentlemen.
I'm delighted to be here with you
alongside my distinguished colleagues
here at the USPTO to share our plans
for the implementing implementation
of the provisions of the Trademark
Modernization Act of 2020.
Joining me today are, as you heard,
Commissioner Dave Gutter.
We've got deputy Chief Judge Mark Fuhrman.
We've got deputy Commissioner for
trademark operations Dan Vanessa
and the senior trademark legal
policy adviser Robert Levin,
who's very much responsible
for the rule package.
That we're talking about today.
The notice of proposed rulemaking I'm
going to call it the NPRM for short the
NPRM for the TMA issued on May 18th,
a bit ahead of schedule,
which was quite nice.
The comment period is 60 days.
That means that your written
formal comments are due to
theregulations.gov portal by July 19th.
Your comments must be submitted to
theregulations.gov portal in order
to be included in the records of
our formal rulemaking process.
The ANPRM contains proposals to amend
the existing letter protest rule to
indicate that the letter of protest
determinations are final and non reviewable.
It establishes flexible Office
action response periods.
It establishes exparte expungement
and reexamination proceedings for
cancellation of a registration when
the required use in commerce or the
registered mark has not been made.
It provides for a new non use ground for
cancellation before the trademark trial
and Appeal board and the whole package.
Also sets fees for the petitions
requesting institution of the ex
parte expungement and reexamination
proceedings and for request to extend
office action response deadlines.
Also in the rule package are amendments
for the rules concerning suspension of
USPTO proceedings and the rules governing
attorney recognition and trademark matters.
Finally,
we've got a new rule proposed to address
procedures regarding a court orders
cancelling or affecting registrations.
All the rules in the MPR subject to
change based on your formal comments.
Remember, your formal comments
submitted to regulations.gov.
These rules will not take effect until
the date indicated in the final rule
for expungement and re examination.
However, implementation is required
by the statute by December 2020,
7th, 2021.
For the flexible response periods that EMA
does not dictate a date of implementation,
and so the USPTO has proposed in
the whole package that we might
delay implementation six months,
so that would be June 27th,
2022.
That's for the sake of your docking
systems as well as ours.
Any input today that we receive your
email or through folks providing comments
or questions online is considered
informal and will not form part of
the formal rulemaking record unless
submitted in writing to register.gov.
Regulations Gov pardon me.
We're going to start with the
letter of protest.
The USPTO issued rules formalizing the
letter of protest procedures consistent
with the TMA at the end of last year.
So all that's left for us to do
right now is to tweak rule .37
CFR 2.149 to mirror the statutory
language that any determination
by the USPTO director whether to
include letter protest evidence in
the record of an application shall
be final and non reviewable.
And that any such determination
shall not prejudice any parties right
to raise any issue and rely on any
evidence in any other proceeding.
I would note because I've gotten
questions on this point that
codifying the existing letter
protest procedure has not resulted
in any changes to the practices that
have been in place for many years,
except for two things minor things.
Now there's a fee now for $50 when you file
a letter of protest and under the statute,
the USPTO now has two months in
which to make a determination
on whether to send the evidence
submitted by the protester to the
examining attorney for consideration.
So these are minor changes,
but everything else is the letter of protest.
Procedure that you that you've
known for many many years.
Now the second big bucket in the TMI
is the flexible response periods.
So in the NPRM, you might notice that
in the rule text we have one option
for for how we could see flexible
response period implementation working,
but we actually offer two other
options in the. In the text,
it's in the explanatory section,
so you might want to view those three
options and see what you think.
All options would apply to the
response periods in examination
as well as in post registration.
However, the shortened response period
would not apply to a section 66,
a Madrid application or registration.
The various treaty provisions and
procedures in the Madrid system
for the international registration
of marks at the World Intellectual
Property Organization would make
it very difficult for international
applicants and registrants to meet
those were shortened response period
deadlines in the United States.
So we have carved that proposed to
carve them out in in the implementation.
So the NPRM has three options.
The first option, pretty straightforward,
a standard three month response
period for all office action,
extended one time to the full six months.
We're proposing an extension
fee of $125 per request.
This is not a per class fee.
This is a per request fee.
Our thinking was that we might wish
to propose a shortened period for
only those responses to office actions
that contained simple requirements,
but it became very difficult to
distinguish which office actions
could be considered simple and which
would be more complex without leaving
it up to an individual examining
attorney on a case by case basis.
A bright line rule seemed easier
for everyone's docking system and
consistent with the intent of the TMI,
so this proposal is reflected in
the Imperium rule text option two.
It contained an explanatory section.
It proposes two separate response
periods that could form the basis
for implementing what we call
a two phase examination system.
The first phase would be for
formalities examination and it would
feature a two month response period.
Initially under the TMA.
This would then be extendable
in two month increments.
Up to the full six months upon
request and payment of the fee,
the second phase would be for
substantive examination and it would
have a three month response period.
Also extendable up to the full six months.
Now if you do the math you would
realize that this option could
result in an increase in total
pendency for a particular application
if all extensions are pursued,
but we are looking at it because
it could give us flexibility to
handle this formalities issues.
First issue an office action and
then come back for the substantive
examination separately.
We'd love your comments on that.
Option three is the patent model.
We couldn't get away with a rule
package for trademarks that didn't
have some piece of patents in there.
And here we have option 3.
The initial response period in
every case would be a two months,
but it could be extended increments
up to the full six months.
The applicant would file file the
extension request in fee within the
response period the extension fees
get progressively higher as the
applicant requests more time to respond.
So like for instance,
the first extension fee could
be $50.00 for a third month.
75 for a fourth month and $125 for a
fifth month and $150 for the full six months.
The application is abandoned if
the deadline is missed without the
extension request to revive the
petition to provide must include
the applicable extension fee.
Depending on when the petition is
filed after the initial miss deadline.
We would appreciate your comments
on which of these options would
be most useful to you.
Now the third big bucket in the TMI,
and in this rule package or the
non use cancellation for the new
non use cancellation mechanisms.
So these new proceedings for
cancelling registrations for non use
were the NPRM has the procedures
to implement these proceedings
with the first one is expungement.
The target of these proceedings
is a mark in a Section 1 use
based registration Section 44
Paris Registration or Section 66,
Madrid registration,
where the mark has never been used.
On all or some of the goods
identified in the registration.
The petition to request institution
of the expungement proceedings may be
filed in the window of time between year
three and year 10 after registration.
The team may also provides that expungement
is a new ground for cancellation at
the trademark trial and Appeal Board.
However, keep in mind the timing is
a bit different for a TTAB claim.
The claim is available at anytime after
the first three years post registration.
It does not cut off at year 10 like
the proceedings before the director.
Please note that the claim of
expungement does not affect any other
already available non use claim at the
TTAB that is abandonment or non use,
nor does it impact the timing
for those claims.
Now I want to be very clear that expungement
and abandonment are two different claims.
Abandonment requires you know as
you know the the intent issue.
It comes comes into play and with
expungement there is no evaluation of intent.
So I want to be clear that those
are two different claims.
A further point on the timing of
these petitions just keep in mind
that EMA provides for three years
from enactment two years from
implementation that a petition for
expungement may be filed against the
registration that's over 10 years old.
So for the next two years
after implementation.
A petition for expungement can be
filed any at any registration,
regardless of that window,
between year three and 10.
Any registration that's three years old.
The intent is, of course,
to provide that the clearance of
older Deadwood off of the register
for this two year period that it
should be accelerated during that
period clear off the Deadwood
and clean up the register early.
Now the second proceeding,
it's called re examination and the
target of these proceedings is a mark
in a Section 1 registration that was
not in use as of the relevant date.
The relevant date for purposes
of a proceeding in a Section 1
application is the filing date,
presuming that it was not amended at
any time to a section 1B filing basis,
then the relevant date for purposes of
a section 1B application is the later
of the filing date of the amendment
to allege use or the expiration of
time to file a statement of use.
A petition to request institution of
reexamination proceedings may be filed
in the first five years after registration.
For both expungement reexamination,
those time periods are critical.
Once that window for requesting
proceedings is closed,
these tools before the director
are no longer available.
But of course any interested party can
always bring a claim before the TTAB
or Federal District Court for Nonuse
abandonment expungement is appropriate.
Now the NPRM lays out the matching
procedure that will be followed in both
expungement and reexamination proceedings.
And both were proposing a
600 per class petition fee.
The fee is designed to strike the
balance between cost recovery and
providing a less expensive alternative
to a contested TTAB proceeding.
Any person may file a petition
requesting that either an expungement or
examination proceeding be instituted.
Only one registration per petition
will be allowed and the basis
for that petition must be either
expungement or re examination,
but not both in the same position.
Combining them into one partition
creates a mighty difficulties and
could be problematic for examination
because the evidence for the
different bases will be different.
However,
even if the petitions are required
to be filed separately,
the director can consolidate review
of multiple petitions against
the same registration.
Now the team says any person can file,
so the statute itself makes clear
that there should be no standing
requirement for the petitioner.
The petitioner is not anonymous because
the petition must be filed through TIS and
that means through a USPTO Gov account.
Also,
the petitioner must provide a
domicile address so that we can
determine if the petitioner is formed,
domiciled and thus would need to
include the designation of AUS
attorney in the petition.
If the attorney is designated,
the petition must include the attorney name,
postal address,
email address,
and bar information.
If a petition is filed but is incomplete,
the USPTO may issue a 30 day letter
to address the missing information.
Now I kind of wanted to circle back
to the anonymity question that I do
get a lot because I wanted to note
the USPTO is not currently proposing
that the petitioner be required to
identify the real party in interest.
We're doing this for two reasons.
First,
if the petitioner establish is
a prime aphasia case of non use,
then theoretically it makes no
difference for purposes of adhering
to the intent of the TMA who
that petitioner is or whom he or
she is representing.
The ultimate goal of the proceeding is
to clear Deadwood from the Register,
regardless of who requested the proceedings.
Second,
once the petitioner files the petition,
the petitioner is out of the process
to hold the petitioner accountable
in the context of the preceding for
failing to provide accurate information
as to the real party in interest
would require the petitioner to be a
party to the proceeding throughout,
but that was not the intent of the TMA.
Instead,
we have an option.
We believe that the petitioner who
uses the proceedings to harass
registrants could be sanctioned outside
of the context of the proceedings.
That is,
through the sanction authority of
the Commissioner for trademarks.
The Commissioner for trademarks may
sanction individuals making submissions
to the USPTO for improper purpose.
If the USPTO were to discover
through our ongoing investigations
for fraudulent and bad faith
submissions that petitioner was
actually abusing the proceedings,
the USPTO could preclude submissions
in any proceeding before the USPTO
by that petitioner and the party
the petitioner may be representing.
We could also terminate anyuspto.gov
account created by the bad actor.
So for an example,
the ethical duty of candor that applies
to any party practicing before the USPTO
would be violated and subject to sanctions.
If the petitioner did not disclose all
material facts known that would enable
the office to make an informed decision
whether or not the facts are adverse.
This would include situations where the
petitioner knew that a mark was in use
when the petition alleges that it was not.
So once they complete petition is
filed a courtesy email notice of the
filing of the petition will go to the
registrar and the registrar's attorney.
The petition and evidence will also be
uploaded into the trademark status and
document retrieval system and made public.
No response from the registrant to the
filing of the petition will be accepted
unless and until proceedings are instituted.
Now the petition must include that
verified statement that identifies
the elements of the petitioner's
investigation of non use.
Where did you search?
How did you search?
When did you search?
What did you find as to each
source of information relied upon?
Now, of course,
the reasonableness of the search and
the number and nature of the sources.
The petitioner must search will
be determined case by case.
Because the evidence of non use
that's thought will necessarily
differ depending on the nature of
the goods and services at issue in
the proceedings and their relevant
channels of trade and advertising.
Now those sources must be
reasonably accessible,
and ones that can be publicly disclosed.
Appropriate sources of information
and evidence for a reasonable
investigation may include,
but are not limited to,
state and federal trademark records,
Internet websites,
and other media likely to or believed to
be owned or controlled by the registrant.
Internet websites,
other online media and publications
where the relevant goods and
or services likely would be
advertised or offered for sale.
Print sources and web pages likely
to contain reviews or discussion of
the relevant goods and or services.
Records of filings made with or
of actions taken by any state
or federal business registration
or Regulatory agency.
Additional sources.
The registrant marketplace activities,
including, for example,
any attempts to contact the
registrant or purchase the
relevant goods and or services.
Records of litigation or administrative
proceedings reasonably likely to
contain evidence bearing on the
registrant's use or non use of the
registered mark and, of course,
any other reasonably accessible
source with information establishing
that the mark was never in use
in commerce or was not in use
in commerce as of the relevant
date on or in connection with the
relevant goods and or services.
Now, the primary facie case.
The director is the gatekeeper to
the process and the director decides
whether a prime aphasia case is made
based on evidence and information in
the petition and the USPTO's electronic
record of the involved registration.
Now the director also has the authority to
institute a proceeding without a petition.
If the director has evidence
establishing a prima facie case.
For example, the director could
institute a proceeding on different
goods and services in a registration
that's already the subject of a
petition initiated proceeding.
Now, of course,
the director can consolidate review of both
proceedings on that same registration,
so consolidated proceedings are related
parallel proceedings that may include
both expungement and re examination grounds,
but it's the same registration at issue.
A primer facie case requires only
that a reasonable predicate concerning
non USB established.
If a primary feature case is established,
the director must institute proceedings.
And if proceedings are instituted
just as an examination,
the burden of proving non use by
a preponderance of the evidence
lies with the director.
If a primer facie case is not
established in the petition itself,
the director will not institute
petition based proceedings.
The director will not add evidence to
a deficient position to establish a
Prime ification institute proceedings,
but if the director has its own evidence
that establishes a privacy case,
the director could institute proceedings
on his own initiative without a petition.
Once proceedings are instituted
and office action will issue the
directs of registrant to respond
within two months with proof of
use of the mark on the challenge,
goods or services.
The director's decision to institute
proceedings based on a prime aphasia
case is final and non reviewable.
Now the restaurant has two months
to respond and the registrar is
subject to the USPTO's rules
on electronic correspondence.
Domicile address and represent
a representation by US council
if foreign domiciled.
The registrant really has three options
for his or her response number one
provide evidence of use #2 provide
evidence of an excusable nonuse,
and three deletion.
Let's start with the 1st.
Evidence of use.
The registrant must provide such
evidence of use, information,
exhibits, affidavits,
or declarations that may be
necessary to rebut the prime
aphasia case by establishing that
the required use in commerce has
been made honor in connection with
the goods and services at issue
as required by the Lanham Act.
Any documentary evidence of use
need not be specimens of use in the
section one of the Act's sense,
but must be consistent with the
definition of use in commerce
in section 45 of the Lanham Act.
Now,
specimens are typically what
will be provided, we think,
but there may be situations where the
specimens are no longer available.
In these cases,
the registrant can provide
additional evidence and explanations
supported by declaration.
Resubmitting the same specimens already
contained in the USPTO records without
additional evidence will likely be
insufficient to rebut the prime aphasia case,
you have to keep in mind that the office has
already reviewed USPTO's records to determine
whether or not to institute proceedings,
so the specimens that are already in
the record are not going to work.
We've seen them testimonial evidence must
be submitted, but should be supported
by corroborating documentary evidence.
For expungement the proof reviews must
show that the use occurred before
the filing date of the petition.
For re examination the proof of use
must show that the use occurred
on or before the relevant date.
Now the second bucket of acceptance
of response is excusable nonuse,
however, this is narrow.
This only applies to section
44 or 66 registrants.
In the context of an expungement proceeding.
Excusable Nonuse is a treaty entitlement
for Paris and Madrid registrants,
and it does not apply to
Section 1 registrants.
It only applies in expungement because
section 44 and 66 registrants did not
have to establish use in examination
as a condition for registration
that would now be questioned
in a reexamination proceeding,
so it's just not applicable.
OK, so that third bucket of deletion right?
Registrant may delete some or all of
the challenge goods and services and his
or her response with immediate effect.
A registrant may not amend an identification
in the context of these proceedings,
though,
and we received a question of
about this at the last round.
Table whether any regulatory allowances
would be made for registrants in the
expungement reexamination proceeding
who are affected by a mistake
made by counsel in identifying
the original goods and services.
So a fact pattern that that explains this.
If the proof of use does not match
the identification of the goods
and services being challenged,
maybe this was because the applicant
initially made a mistake in identifying
the goods and services in his
application and never fixed that mistake.
Now the register on in the context
of this proceeding may not amend the
identification to match the proof of use.
However, there is a way around this.
The registrant could file a section
seven amendment to narrow the ID within
the scope of the original and notify
that amendment to the expungement or re
examination examiner for consideration.
If the registrant did not do
so prior to the proceedings.
Keep in mind that we cannot guarantee
the section #7 amendment would be
accepted and also keep in mind we would
not actually suspend the examination.
The expungement or reexamination proceedings.
But we would try to expedite consideration
of the section seven amendment.
Now, if the Registrant's response
proposes deletion but the timing of
this deletion occurs when the same
registration is also in the middle
of a post registration examination
of the Section 8 or 71 declaration.
If that deletion happens at,
this happens to happen at the same
time the post registration and
examination deletion fee kicks in.
The deletion fee of $250 per
class will be due.
If you recall,
in January 2021 we we implemented
a deletion fee if the goods or
services had to be deleted in a in
a post registration examination
or a post registration audit,
and we don't want the expungement
reexaminations preceding deletion to be
a way to get around that $250 deletion fees.
So if they happen at the same time
that deletion fee is still do.
Now I want to note specifically here
that we are not proposing to charge
a deletion fee in the context of the
expungement reexamination proceedings.
Because we want to incentivize
deletion in this context and and in in
the sense that it post registration
maintenance examination is.
This is a separate different proceeding
than than one we're looking at here.
So in this context, generally we're
not charging that fee deliberately.
So, but let us know if you think we
should enter in your formal comments.
Now the registrant can delete
goods in the response,
but they could also delete goods and
services through a section seven amendment.
We need to know about that.
The section Seven amendment must be
notified by the registrar in your response
to the expungement or re examination.
And the same thing is true with a
voluntary surrender of the registration.
You can do that as a separate proceeding,
but it has to be notified
to us through the response.
Now, if any one of these responses happens
and it we consider it to be acceptable,
the proceedings will terminate.
Early and no cancellation order will issue.
Now, if the registrant's response is either
a non response or an unacceptable response,
that's what we're going to look at here.
No response results in immediate
cancellation for the goods and services
on which the proceeding was instituted.
Now a petition for reinstatement is
available if the failure to respond
was due to extraordinary circumstances.
The typical time periods for filing
those sorts of petitions apply.
Now of course the the response to
the outstanding office action will
also be required along with that
petition and the fee.
We don't want this process to be
used to prolong the registrant's
overall response period.
And remember,
it may bears notice that the NPRM
adjust the due diligence monitoring
rule such that the registrants must
monitor the status of the registration
at least every two months after in
notice of institution of proceedings.
So you've got to be alert once
these proceedings are instituted,
you have a due diligence requirement
to check every two months.
If the response is unacceptable
or it's incomplete,
a final action issues with
a 2 month response period.
We actually are asking for comments
in the NPRM on whether we should
issue a 30 day letter for a timely
bona fide attempted response
to the First Office action,
but which omits some small
matter of compliance.
I wanted to go back to the issue of
deletions, though that the third bucket
and flag two issues that I'd love for you
all to comment on in your formal comments.
The MPR specifically request comments on
whether a registrant who fails to respond
to the office action should have his or
her registration flagged for later audit.
This means from a best practices
perspective not responding to the
office action and allowing a deletion
to occur without affirmatively
responding and deleting the challenge,
goods and services would no
longer be an option.
Our thought in asking for comments
about an audit is that a registrar who
simply does not respond may have bigger
problems in his or her registration,
for which evidence of non use
was not available.
But in fact the mark was not in
use for additional goods and
services in the registration.
So if we target it for later audit,
we can find out if the rest of
the registration that was not
challenged in the proceeding hold up.
Under further scrutiny scrutiny.
But we are aware that such a policy
could raise another issue for foreign
domiciliaries who may not wish to
respond to an office action because
they don't want to have to get you as
Council in order to affirmatively respond.
They might prefer to to let the
challenge goods and services fall away,
and they might not want to hire
an attorney to make that deletion
or to surrender the registration
in order to avoid the later audit.
But maybe on the other hand,
that's not something we would.
Like to consider it so we kind of would
like to have some comments to determine.
Is there a way for a foreign domicile
registrants to be able to respond
to the office action and simply
delete without having US Council?
Or does that create a disincentive
for foreign registrations to use the
existing no cost mechanisms to keep
their registration up to date all the time?
So we would love your input on that piece.
Now the response to the final action.
The final action will include the examiners
decision in an expungement proceeding,
that the registration should be cancelled
for each goods or service for which
the mark is determined to have never
been used in commerce or for which
excusable nonuse was not established,
or for non compliance with any
requirement under Rule 2.11,
US Council ruled 2.23 failure to
provide an email address for electronic
correspondence or rule 2.189.
Failure to provide a domicile address.
The final action for reexamination
proceeding would include the
examiner's decision to cancel the
registration for each good or service
for which the mark was not in use
on or before the relevant date,
or for non compliance with the
same rules I just mentioned.
The Registrar must respond to the
final action with a request for
reconsideration and a notice of appeal.
Now, if there is no response
to the final action,
USPTO will terminate proceedings
and order cancellation of the goods
and services that were challenged.
Again,
a petition for reinstatement is available,
but only for an extraordinary situation.
Keep in mind if the request
for reconsideration contains
acceptable proof of use,
we will terminate proceedings and
no cancellation order will issue,
but otherwise,
the examiner's decision to cancel
will then go to the trademark
trial and appeal board and the
regular board timelines will apply.
Goods and services for which use in
commerce has already been established.
May not be subject to further
expungement or reexamination proceedings.
These are the.
This is the estoppel provision in the act.
But keep in mind,
this estoppel provision does not apply
to subsequent board proceedings.
So in other words,
even if the registration is subject
to an expungement or reexamination
proceeding before the director,
that registration may still be challenged
at the TTAB on a claim of expungement,
abandonment or non use is appropriate.
So As for pending proceedings,
we cannot institute expungement
proceedings on the same goods or services.
If an expungement proceeding on those
goods and services is already pending,
we can't just keep loading
up on the same registration.
Likewise, we will not institute an
expungement or reexamination proceeding if
every examination proceeding is already
pending on those goods and services.
We will deny the later filed petition unless
it covers goods and services not already.
The subject of an instituted proceedings.
We have proposed to amend the
rules that so that expungement in
reexamination proceedings are included
among the types of proceedings for
which its suspension of action by
the office or the TTB is authorized.
We are also proposing to amend
the rules to reflect our current
suspension practice generally.
The TTAB will suspend proceedings
when another proceeding that is
relevant to the registrability
of the involved mark is ongoing.
However, the rule is currently written
such that the suspension practice
is limited to proceedings where the
exact same party or parties are
engaged in the other proceeding.
So we are proposing to amend the rule
to reflect our actual practice and
whereby we look at the relevance of
the proceeding to the registrability
the registration rather than looking
to the identities of parties.
Now here is a visual for those
of you who think visually.
This is an overview of the
expungement and reexamination
proceedings before the director.
And these slides will be posted
or they actually they already
are posted on our website so
you can take a closer look.
But let's walk through this simplified
version so the process begins with
the petition against the registration.
It goes to the examiner.
There are two possible outcomes.
An institution decision.
This would also be combined with
the First Office action with the
other option is denial to institute.
Now the next the examiner, let's say the
registrant has two months to respond.
Any examiner reviews the response?
The registrant could have either
submitted an acceptable response or
an unacceptable response or or doesn't
respond and acceptable response
moves was forward and unacceptable,
and I'm sorry an acceptable response
means termination of the proceedings
immediately with no cancellation.
Unacceptable response moves to the examiner
and issue who issues a final action.
No response.
It results in immediate cancellation.
Of of the goods and services on
which the proceeding was instituted,
not the entire registration or the entire
class, just the ones that were attacked,
and upon which proceedings were instituted.
Now the examiner can, like I said,
terminate the preceding issue.
A final action or cancel.
Goes back to the registrant.
The registrant has two months to respond.
They can file he or she can file
a request for reconsideration,
providing additional evidence.
He can file also a notice of appeal
at the same time.
Or he could not respond at all.
A non response again will be
tagged for later audit,
but the goods and services that were
attacked will be immediately cancelled.
The Examiner refused the
request for reconsideration.
If the examiner decides that
the the the evidence submitted
is accessible acceptable,
the proceedings will immediately terminate.
If not, then it goes to the board where
the board will review the appeal.
Now we're going to move on.
To some other features in the NPRM,
not strictly driven by the TMI,
but they are driven by our need
to have clear correspondence,
rules and implement provisions
of our database login project.
Now overall, when you look at
these rules in the Imperium,
I want you to notice that we're
moving away from using the term
representation to the term recognition.
We recognize here that they represent
representatives for the we recognize
representatives for the purpose of
determining who is authorized to act
for the applicant to the registrant.
We do not control the actual
representation agreement between
the attorney and the client,
and we want to make sure
that's clear in our rules.
So we're we're changing the wording
to reflect that reality now.
As for the substantive change
here under our current rules,
recognition ends when an
application is abandoned.
A registration expires or is
cancelled or changes owners.
Under the proposed rules,
recognition would instead continue
after all of these events.
So that means that in order to end
the recognition of the attorney
by the USPTO owners and attorneys
would be required to proactively
file an appropriate revocation or
withdrawal document rather than the
current situation where recognition
automatically ends at certain events.
Now we want to make this rule
change to match our practice.
The background this for this change
relies on our correspondence rules.
Now the USPTO is supposed to correspond
only with the applicant or registrant.
If the applicant or registrant is
not represented by an attorney.
So if recognition has ended after
these those events that I named,
we should stop sending correspondence
to the attorneys correspondence address.
But we don't.
Stakeholders told us not to
follow our correspondence rule,
attorney stakeholders in particular
told us they wanted to continue
receiving correspondence so that
they could know when the post
registration filings were due,
for example,
and so we want to amend our
rule to reflect our practice.
Now the other part of this
situation is the rule.
This rule change will actually
facilitate implementation of the
role based access control system
for applications and registrations
that we're right now developing.
So if you recall,
we implemented our database login
project phase one where to in
order to file any TS forms you
have to have a uspto.gov account.
We have two more phases coming.
The second phase is an identity
verification process for database login.
And then after that we've got
role based authorization.
So in this situation users are going
to be assigned a limited number
of roles so that they can control
and delegate access to filings,
and this would be, you know,
Attorney Attorney,
support owner and public administrator roles.
And only those people would be
authorized to touch the file,
and this will definitely cut
down on any unauthorized changes
of correspondence and the like.
So under our current rule,
if we were to retain that rule
in order to
submit the TS form,
say for example to file a maintenance
document on behalf of a client.
The role based access controls would
require the no longer recognized
attorney to 1st request it permission
from the owner in order to file.
And we're concerned about miss deadlines.
That creates a lag in in timing,
and we know that that could be dangerous,
so we want to fix the rules to
match our practice and allow us to
assign roles for access controls.
We're also proposing a rule change
to clarify attorney obligations when
withdrawing from representation and
differentiate the grounds upon which
an attorney may request a withdrawal
versus those situations where an attorney
must request withdrawal and there
really should be no surprises here.
This will allow us to be consistent with
the USPTO rules of professional conduct.
Now the last bucket of rule changes in
the Imperium are about court orders.
Now this is this is pretty easy.
Where you want to codify the USPTO's
longstanding procedures concerning
action on court orders canceling or
affecting a registration under 15 USC 119.
The USPTO requires submission of a
certified copy of the court order and
normally does not act on such orders
until the case is finally determined.
We're just simply embedding
this practice into a rule.
So that was a summary of the rule
package and it was hopefully designed
to facilitate your efforts to provide
formal comments to regulations Gov.
We hope that you will be able to help
us refine this rule package into a final
rule with which we can all be comfortable.
And here's some information for
you about how to submit formal
comments and what the deadline is.
Here are some helpful links or remember,
this is already posted on the USPTO TMI
webpage, so here's some links for you.
And then I thought it might be
helpful for you all to have set
of reference slides that identify
the rules implicated in the NPRM,
and I'm not going to walk through them now,
but they will be available on the slide deck.
And you can see we have the
letter of protest rule tweak.
There we've got conforming amendments
for shortened response period.
There's there's no new rules there,
just conforming amendments.
We have some new rules here for non
use cancellation and conforming
amendment rules for non use.
And then we have the rules implicated
with the recognition of representation,
withdrawal rules,
and the Court orders.
So I wanted to close my remarks with
a suggestion you might have noticed
that as part of our initiatives
to protect the integrity of the
trademark register from false claims
of use and fraudulent submissions.
More generally,
we're implementing disincentives for
maintaining inaccurate registrations,
or perhaps more positively,
I should say we're incentivizing
accurate registrations.
So I mentioned before 1 disincentive,
which was implemented in January 2021.
Is that deletion fee in the
post registration context?
The other is the TMI expungement
reexamination proceeding.
It's a disincentive to filing inaccurate
and holding on to inaccurate registrations.
So. We want to incentivize.
Maintaining accurate registrations
and one way we did that was to
establish a zero fee for filing
of section seven amendment,
which deletes unused goods and
services from the registration.
So I really would would highlight that.
Recommend that to registrants and
their representatives to review
their registrations for accuracy
and make adjustments now through
this free process and doing so.
Then it's an easy way to avoid
having one registration targeted
for re examination or expungement
proceeding or getting caught up in
having to pay the $250 per class.
Deletion fee in a post registration,
examined maintenance, examination, or audit.
So that was my public service
announcement announcement to help
you think about cleaning up your
registrations early and often.
And now I'd like to hear what
comments and questions that are
speakers have today and we actually
got a bunch of questions.
A pretty, pretty recently,
uh,
in the mailbox that we will try to
go through after we hear from our
our live speakers and we'll try
to get to as many as we can today.
If you have a question that you
would like us to try to answer that
hasn't already have been answered.
Please email TM underscore webinar
at USPTO Gov and they will.
Those questions will be fed to
us by the Tasha. OK.
So Tasha turning it back to you.
Thanks Amy,
our first speaker is Michelle Horror.
Sheldon, please bear with you.
Please bear with us as we try to
elevate the speakers up to the panel.
How? Can you hear me now?
Yes, we can hear you.
OK, great thank you all right.
I want to briefly mention that
I reviewed and read some of the
comments that were on June the 1st.
And I agree with.
Some of the written comments from
the Council for Amazon for the
counsel Miss London at a private
law firm for the president at the
American Intellectual Property Law
Association and the Attorney for
General Electric and in so doing,
I wanted to also add just a few
things with a question number.
One is about the standing issue
for the third parties.
I'm concerned that there may
be issues of retaliation.
From and by third parties,
either against Council or against
the registrant. So how will?
I guess specifically Mr Robert
and the Bosch and his team,
and please forgive me if I'm
saying his last name incorrectly.
How will? How will that be dealt
with and then second of all?
My concern is about the $250
deletion fee per class.
Why that's so much money?
It's it seems to be a penalty.
Instead of an encouragement
for doing the right thing.
And then.
The 30 day letter is welcomed by me.
The more notice you give
the individuals in advance,
the better and happier and more Peace
of Mind you're going to be giving your PTO.
Customers.
In addition,
I'm going through this very quickly
because I don't want to know
when to be respectful of time.
In addition. 22 last things.
I know from personal experience
that there is an issue that
is never usually addressed,
so I'm going to address it now
for the first time and that is
the issue of incompetent counsel.
Many times.
Applicants who then become registrants.
I've had incompetent council
and they have to deal with the
deck that they've been given.
And then they don't know
how to correct things.
They they don't know what to do.
So I understand about the withdrawal
of counsel and and the process
and procedure that's needed.
But I kindly,
thoughtfully and professionally ask
him request. That from henceforth on.
The issue about incompetent
counsel be at least considered
and addressed and then finally.
On all the pages that I've
noticed on the PTS website,
especially with the T, the.
The TMI.
When you do it, when you click the dropdown.
There's Facebook, there's Twitter,
there's LinkedIn.
There's dig that I've never
heard of and read it.
But the one symbol that's
missing is the email symbol.
Because this is important
information to share.
In fact, all of the PTO
information is important to share,
and if you if the detect team can consider.
Including.
Up next to the printer symbol,
the an email symbol that also joins.
You know the symbol for Facebook,
Twitter, LinkedIn,
Digg and Reddit.
That would be wonderful and
and that is my public comment.
Thank you very much for your interest,
your thoughtfulness and your time.
Thank you, Michelle.
I'm going to go through these issues
as quickly as I can on the the question
of standing that that question has
been answered by the Statute itself
and there's no standing requirement
any any person can file in my remarks I
mentioned about whether we should the
USPTO should require the petitioner to
identify the real party in interest,
and I explained why we we had not
put anything in the rule to do that.
A number one.
If their evidence is there that
the mark is not in use,
it doesn't matter who who put it
forth and #2 the petitioner is
not a party to the proceeding and
bringing them into the proceeding,
then we're in an inter partes
proceeding and the intent of the
statute for a very quick and,
you know,
effective way to clear Deadwood
off the register sort of is lost,
as I mentioned in my remarks,
we do have the ability to look into
situations where somebody is filing
improper submissions to the office.
The sanction authority of the
Commissioner for trademarks is
something that we are now using
to good effect when we are seeing
bad faith or fraud.
Fraudulent submissions before the office,
and we intend that we would use that
authority in this context as well.
If a petitioner is using the
proceedings for improper purpose.
So we we think we can,
we can get at it outside of the
context of the proceeding itself,
without requiring the petitioner
to be apart of the proceeding which
we can't do because the statute.
Says that so I just wanted to
highlight that the $250 deletion fee
in the post registration context.
That is a rule that already issued
for public comment and was implemented
a while ago.
Now your point was,
it's a punishment or an incentive.
It's a punishment by law,
by the statute you're supposed to
be filing a maintenance document
that is accurate and you are filing
that and signing in on a declaration
of perjury. 18 USC 1001.
So, to the extent that.
Filing a document that's inaccurate.
Then we are imposing a penalty and
the background for that penalty is
the fact that for let's see it since
2012 we have run the post registration
proof of use audit and 5000 registrations.
A year are audited and over the course
of that time frame 2012 to 2021,
the 50% of the registrations
queried deleted goods and services.
50% had inaccurate maintenance filings 50%,
and it was equal among foreign
registrants and US registrants.
It was equal between 44 / 66
registrations in one a registrations
and 80% of those were represented
by US Council who are part of the
process in filing an inaccurate
maintenance declaration.
So yes,
it is a $250 per class penalty for
filing an inaccurate declaration,
and we're hoping that it will
change behavior.
So that people will actually
file an accurate declaration.
So so yes,
that's that's the purpose of the rule,
and we hope that it doesn't catch up to
many people because we hope people are
cleaning up their registration and filing
accurate documents before the USPTO.
As for the point about incompetent counsel,
again, I addressed that in Rome.
I remarks in the sense that there's section
seven amendment process allows allows
registrants to correct whatever problems or
deficiencies exist in their registration,
as long as it's within the
scope of the original.
And we would encourage everyone to clean up
their registrations in order to do that,
make sure your proof of youth
matches the identifications of goods
and services in your registration.
If those problems haven't been fixed,
then they need to be when you file a
register when a registrant files you
know submissions before the office
and make their variants as to the
truth of the statements made,
so we would like to see that this
is the quality of the submissions
before the office improve,
and we think all of these little changes
that we're making our our design.
To do that,
and As for the icon on the tech team,
we will definitely look into that and
we appreciate the suggestion very much.
So now I think we need to move
to the next speaker Tasha.
Thanks Amy, our next speaker
is Alison Ricketts Allison.
Hello, how are you good afternoon?
I first I'm going to comment on your
request for comment on the weather
registrations that are the subject of
a non use proceeding should also be
selected for the post registration audit.
My view on that is no.
That audit is supposed to be random,
but this is not random.
You have limited resources to conduct audits.
I attended the web and are a
couple weeks ago about this.
The post registration audit and
you know you were only able to do
a small percentage of all filings.
Down filling up that already small
number with registrations that
have already been scrutinized
as a result of this proceeding,
I think is unlikely to greatly improve
the accuracy of those registrations,
but it could interfere with efforts to
improve the accuracy of other registrations,
and stakeholders have already
expressed concern that proceedings
may be instituted by bad actors
for reasons other than ensuring
the accuracy of the register,
so causing registrants further expense.
To undergo an audit only exacerbates the
potential for mischief by bad actors.
Turning to the UM and also I
think according to the NPRM,
you're estimating as many as
3600 of these proceedings a year,
and I know not all of those are going
to be due for post registration
filing during that period.
But even if you consider it
spread across three or four years,
that's a pretty substantial chunk of
what you have available to do each year.
OK,
I have a lot of questions about
the role based access proposal so.
Let's say that a new.
The ownership has been assigned to
a new attorney or to a new owner.
The new owner wishes to cause its
attorney to become the new attorney in these.
Registrations. How will they do that?
And is the answer different if
they have recorded the change of
ownership with the assignments branch
versus if they have not yet recorded
the change of ownership?
I I know it says that the
attorney who's currently in the
record is supposed to withdraw.
Once they know I forget the
rules or I have him here anyway,
once they know they've been discharged I
think is is one of the times when you,
when you may withdraw.
But you have up to 30 days to do that,
following when, well,
that's another point is,
I think that should say following
30 days when after the attorney
learns of that they have been
discharged rather than just 30 days
after they've been discharged.
If you consider that discharging
the attorney includes.
Transferring ownership of the registration,
it seems to me that the person
remaining in the record obviously
cannot be the attorney for an
unrelated new owner with whom it has
no attorney client relationship,
but that doesn't necessarily mean
that that person is going to be
immediately informed by the parties
involved in this transaction.
That, hey,
you've been discharged by virtue
of this assignment
and you need to withdraw within 30 days.
So I think there should be some,
you know, notification in 30 days.
After you find out.
Uhm, but let's say that you are the new
owner and you want to record the assignment,
but you have some problems you found
in your diligence when you went to
acquire this portfolio that there is
some errors in some of the registrations
that inadvertently had identified the
wrong state of incorporation, for example.
So, in order to be able to record
the assignment which lists the
correct state of incorporation,
you need to file a Section 7 to get those.
Registration's fixed.
Now who is going to have the
role based access to make that?
Correction,
which is a condition precedent
to recording the assignment.
Anything more that you can say about how
this role based access is going to work,
especially in the case about transfers
of ownership, would be really,
really helpful in in terms of
preparing the withdrawal form.
I've had some bad experiences
with that in the past,
but I've reported them and
I'm hopeful that the comments
have resulted in some changes.
But for example,
let's say you're discharged by the applicant,
but the applicant is an XUS domiciled
entity required to have US council.
How will the attorney withdraw,
thus rendering the XUS domiciled
registrants without US Council if they
do not have any information about
whether a new US Council we will
be appointed and who that might be?
Also, will we be required to fill in
stuff like the the the Registrant's
email address and domicile address
just in order to have access to
the forms to allow us to withdraw?
I see my time is up.
Thank you.
Thank you very much, Alice,
and you know I'm going to suggest
that you a file formal comments so
that we get all of that information
and can and can review it carefully.
I think you write some some good points that
we we need to consider as we move forward,
so I'm happy to encourage you to to
go as I know you will regulations.gov
and file those comments so we can.
We can come look at them more
carefully and think about how they
would work in the final rule.
So thank you very much Alice
and I appreciate the input.
I don't.
I don't have any comments for you right now.
Unless Bob,
do you have anything you want to add?
I don't there was a lot there.
Uhm, I will say you know we are
of course aware of some of the
issues with submitting forms and
we are actively working on on on
those and on the ownership issue.
It is a complicated issue in
terms of attorney recognition,
so I would echo Amy's comments
there that please submit formal
comments with your concerns.
I sure will. Thanks so much.
Thank you, our next speaker is Ted Davis.
Thank you, I have three questions,
each of which relates to the initiation.
Of an ex parte proceeding. Uhm?
The notice advocates that a prime
aphasia case requires only a reasonable
predicate concerning non use,
and there does seem to be a consensus that
a prime aphasia case is something less
than proving the case by a preponderance
of the evidence and the testimony.
But the notice also resides at the office
bears the ultimate burden of proving non
use by a preponderance of the evidence.
Does this standard apply as well to
petitions initiated by private parties?
My second question relates to what
happens if a petition establishes
a prime aphasia case of non use.
But it's not accepted for some other reason.
For example, a failure to
describe the petitioners
investigation in sufficient detail.
You have indicated that the director
will not add to a deficient petition.
But can the director otherwise
avail himself or herself of the
evidence submitted in support
of the failed petition?
In support of a director
initiated proceeding.
And then finally, the notice indicates
that if a proceeding is instituted,
the petitioner will not have
any further involvement.
But can a petitioner withdraw or
supplement its petition prior
to the director acting on it?
If, for example,
the petitioner is paid off by a registrant.
Or, alternatively,
the registrant provides the
petitioner with evidence of
use as of the relevant date.
Thank you, Ted. I'm reading your
comments in the caption as well.
Trying to process them.
Uhm, I think the I don't know that we
can answer any of those questions today.
I think that if you submit
them in your formal comments,
that will give us some time to
internally digest and figure out
what we think the the answer is,
particularly on the second issue.
Uhm, you know that's something that we we
need to consider how we're going to address.
If you have a preference for how you
would like us to address any of those,
we would greatly appreciate that.
Not just pointing out the issue,
but how you think that it should be handled.
The NPRM does not,
of course go into these issues,
so it's really a matter of implementation.
Drilling lowered down further than the rule,
and so we're we're happy to take
in any of that information through
the formal comment period,
but I I don't have any comments
on that today.
Is there anybody on my panel who
would like to to answer any of those?
Correct,
have anything to say?
I guess that's a no.
But thank you so much.
I knew your question.
I knew your questions would be
very thoughtful and stumped the
panel for for a few as we as we
have to go back and and consult
and and figure out how we might
try to answer those questions.
We will certainly do that.
Uhm, the next speaker is actually,
UM, Matt Frisbie, who emailed me the
questions that he was going to ask and I
will go ahead and read out his question.
And because he gave them
to me with plenty of time,
we were able to have some answers ready.
Mr. Frisbie question.
First question,
it is clear that the director cannot
supplement an inadequate third
party petition unless the Director
initiates his or her own proceeding.
However, will the director be able to
conduct additional diligence to verify
the authenticity of evidence submitted
by a third party or the registrant?
Or is the Directores review limited
to the four corners of the submissions
and the registration file wrapper?
Thank you for the question Matt.
Under proposed Rule 2.92 and expungement
or reexamination proceedings will be
instituted only in connection with
the goods and services for which
a primary facie case of relevant
non use has been established.
The PTO's determination of whether
partition has established apartment
facing cases based on the evidence
submitted with the petition,
as well as any other evidence already
available in the USPTO registration record
which includes the application file.
USPTO will review the evidence submitted
with the petition to determine its relevance.
And probative value in certain
cases that review may result in a
determination that evidence is not
persuasive or should not be giving any
given any weight in the determination.
We anticipate that generally this review
will be limited to the registration record
in the evidence submitted by the petitioner.
But if other evidence that
affects the probative value of
the evidence is considered,
we will provide that evidence and explain
it in the USPTO's petition determination.
OK.
He gave us warning so we were able
to have our answers at the ready and
his second question in the NPRM.
Most office actions will have a three month
response deadline under Rule 2.62 and 2.163.
But the proposed deadline to respond
in an expungement or reexamination
proceeding is 2 months.
Can you elaborate on the
rationale for the difference?
Yes, we can.
The proposed two months,
two months response period for
expungement and re examination was was
proposed because these proceedings
are supposed to be faster and more
efficient than other available options
for cancellation due to non use.
In addition,
unlike other office actions issued
during the application process and
in connection with post registration
maintenance filings which may
raise a variety of issues,
office actions in these proceedings
are focused solely on the issue of use
of the registered mark in commerce.
The USPTO believes that the proposed
two months response.
Deadline for these proceedings is
sufficient because most registrants
are likely to already have evidence
of use that is contemporaneous with
the relevant date at issue and
if if in fact such use was made.
So.
While I understand from
a practice perspective,
it's nice to have every proceeding
before the office be matched and
and so there's no surprises because
there are
different drivers,
different policy rationales for what
we're trying to do and and the speed
in which we're trying to do it.
We are having to create different
timelines so we understand that.
That that can be an issue,
but they are certainly,
you know, designed for a reason.
But if you have thoughts about
how they should be different,
we'd like to hear it in your formal comments.
So that's all from Mr.
Frisby and do we have Miss
Russell or Mr More available yet?
Mr. Moore uh, thank you.
Can you hear me now? Yes. OK Mike.
Thank you for having the round
table so it took me awhile to
get my browser configured to do
whatever it's supposed to do.
First comment is in cases involving
international registrations.
I'm assuming you're going to
notify Paipo and will you require.
A statement by Wypo to the USPTO
that HYPO has in fact sent a
notice to the holder of record.
Second comment is in in some of
your slides you showed an examiner
being involved in the petition for
expungement and petition for RE exam.
And my question is would that mean it's
an examiner like a post registration
examiner is not necessarily an attorney?
Or would it mean that it's
an examining attorney,
someone with a law degree and
third comment is on withdrawal?
By an attorney or registered practitioner.
Is there any consideration given to a
simple statement that you've lost contact,
especially after a first renewal is
filed and there's a period of 10
years between when the attorney may
speak to the owner of the registration
until something else happens?
In my experience, doesn't happen very often,
but it does happen regularly
that you just have no way,
as the attorney was.
Listed as the Attorney of record,
you have no way to get ahold of the owner.
The address you use,
the email or the postal mail comes
back undeliverable.
Email doesn't get any returns and.
From a practitioner standpoint
of being able to just say we've
lost contact with the owner,
I think would serve the public interest
so it does not appear that the owner is
getting the information from the fact
that an attorney of record is listed.
Thank you.
Thank you Mr.
Moore, with regard to your first
question about section 66 registrants.
At.
The institution of over preceding
the notice of the institution of
proceeding would go directly to
the the international registrant,
not to wipe.
Oh,
if the preceding was successful and
there was a ceasing of effect as
to all of the goods and services
or whatever was attacked and
and there was then cancellation,
then at that point we would issue a
notice of ceasing of effect to the
International Bureau of of the World
Intellectual Property Organization.
But the the communications
regarding the institution proceeding
would not go through wipe.
Oh, they would.
Go directly to the registrant.
I hope that makes sense on your second
question as to who is the examiner,
that's something that we're still working on.
Certainly these are complex
proceedings on on use and the
evidence involved so you know at
this point we are considering that
it would have to be experienced folks.
Attorneys who are reviewing these,
but we're still, you know,
we're not sure how many of these
were going to get and exactly
how we're going to staff it,
but we know that the issues
are going to be complex.
And we're prepared to deal with
that and and have some very
experienced folks working on this
as we roll out these procedures.
So I I do think that we will
be having a attorneys.
Will they be the original examining
attorney that looked at the file?
No, these would be a separate
unit more than likely,
but we're still working these things out.
And As for the the comments on withdrawal,
that's a very helpful fact pattern for us
to consider as we move forward, so I think.
I think we will have to take
that back and consider that as
we as we look at the final rule,
I'd love it for you to submit formal
comments so that we can have it
as part of the rulemaking record.
That would be very helpful to us.
Bob, did you want to?
Did you have any comments on any
of those issues and or correct me
if I got anything wrong there?
Yeah, I mean just on the withdrawal question,
of course, uh, you know,
we're gonna have to update our
forms accordingly.
You know, because right now,
if the rule says attorney
recognition ends at certain periods,
including registration,
then your withdrawal can simply say,
be, you know, recognition is ended.
Of course, as the speaker pointed out,
that's no longer going to be the case,
so we will need to update our
forms accordingly.
And I will just also
point the speaker to the.
Rules of professional conduct
which basically indicate that
the practitioner may withdraw
if the client fails to fulfill,
fulfill its obligations,
or if the representation has been
rendered unreasonably difficult by
the client, so that might be an area,
but again,
we will make sure to look at our
forms when we make this change to make
sure that all the withdrawal options
are are there in the form for you.
Thank you very much Mr.
Moore appreciate it.
Do we have Miss Russell connected yet?
Thank you, Miss Russell is
having computer difficulties,
so she's asked that we just go
ahead and skip her up and that's
all of the pre registered speakers.
So now we can move to the questions
that were submitted via email
today and so I will now turn
it over to Mr Robert Lebas.
Bob, did we want to look at some of the
ones that were submitted ahead of time?
Sorry, that's exactly what I
was saying, but I was muted.
I apologize for that. Signs.
Uhm, which ones did we
wanna cover first here?
The sewer sponte institution or a petition.
Uhm? So that question,
will the director enter anything
analogous to a third party petition
into the public TSDR record for
registration when it begins review
of our record for an ex parte
expungement or reexamination SUA sponte.
So that's we're talking about
the director initiated here?
Or will the office action setting forth
the two month response period be the
first notice that the register receives?
Uhm? Amy, I guess you want
me to take that one the yeah.
So the we haven't made a final determination
regarding the relevant procedures here,
but right now we anticipate that
that initial office action in the
director initiated expungement or
reexamination proceeding will be
the first notice that the register
receives regarding the proceeding.
But we do.
If anyone has any formal comments
on that issue,
we encourage you to to submit
your thoughts on on those.
AC. Next question, will a registrant
that files A1 application with a
good faith mistake as to use and
then subsequently amend Sue alleged
correct later you state without ever
changing its application basis to 1B,
nevertheless, nevertheless be vulnerable
to cancellation by reexamination?
Uhm? The answer to this is that
actually should not happen.
So in an application under trademark
Section 1A, the applicant may not amend
the dates of use to specify a date.
Of you said is later than the
filing date of the application.
Therefore, in that situation,
and the applicant would not be
permitted during examination to amend
to a later you state without first
amending the basis to 1B and then
subsequently filing an allegation of use.
In that case, the normal timing.
Of when the use has to be shown, applies.
I hope that answers the question.
Next question,
will there be any issue or claim
preclusive effect of an ex parte
expungement determination in favor
of a registrant on a subsequent
inner parties claim of expungement
as to the same registration?
Ah, and then the question says
we would not expect so.
Our answer is that the proposed
rules do not provide that in ex
parte expungement determination,
willpower,
preclusive effect in a subsequent inter
partes expungement proceeding for the TV.
Come see a related preclusion question.
Will there be any issue or claim
preclusive effect of an ex parte
determination against a registrant
in the event that it attempts to
re file on identical application?
For instance,
if a 44 Y registration is expunged
would be registered,
be able to seek another 44 registration
based on the same underlying foreign
registration for the same goods or services.
Uhm?
The proposed rules do not provide
that an ex parte expungement or
reexamination determination would
preclude the filing of a new
application with a section 44 E basis.
Next, is there remedy for claims of
inner parties expungement intended
to be cancellation of these specific
category of goods or services analogous
to its similarly named expert. A claim?
Or will it be cancellation of the entire
class and now it gets to the existing
inner part is not in use claim? Uhm?
The answer is that the new non use
ground for inter partes cancellation
under Trademark Act section 14
substantively follows the basis
for ex parte expungement, namely,
that the registered mark has never
been used in commerce in connection
with some or all the goods or services
were cited in the registration,
so an expert expungement proceeding
may result in cancellation of our
registration in part or in whole.
Of some or all of the goods or services,
depending on whether the proceeding
was instituted as his summer,
all the goods or services,
and whether the evidence establish is done.
Use us to those goods and services
like wise and consistent with relevant
TV president and dinner parties.
Petition to cancel based on this new
ground could result in cancellation
of particular goods or services or
certain classes of goods or services
or the entire registration,
depending on which goods or services
are covered by the pleading.
And whether the evidence of record
establishes non used as to those
goods or services.
OK, so that was a group of questions
that were sent to us ahead of time.
And then we have a few more that
came in ahead of time and we
have a whole bunch on the email.
So let me run through these
quickly in expungement proceedings.
Would evidence of extensive use
or regulatory filings outside the
USB considered to support a claim
of excusable nonuse in the US,
even if use in the US,
has not yet commenced or regulatory
filings in the US have not yet
been submitted.
And, of course, the answer that is,
it's a case by case determination
depending on the facts, UM, probably not.
But you know, I think, uh,
it's a it's a case by case,
so we really can't, uh?
Can't give too much of an answer there.
Number two with respect to
the ex parte proceedings,
did the PTO consider including provisions
addressing any of the following and if so,
why did the USPTO decide
against such provisions?
The first one being confidentiality.
Confidentiality concerns associated with the
registrants need to provide more detailed
evidence of use or excusable nonuse,
and the our response is.
Yeah, we are.
We are aware of those concerns,
and we welcome your comments
on how to deal with that.
The the more procedures that we.
We have to create and impose,
UM,
the certainly the longer
these proceedings take,
and that was not the intent.
So at this point we we everything
is above the public record and and
that was that was done deliberately.
But if you would like to
see something different,
please submit formal comments and let
us know. Uhm, .2 allowing a register.
An opportunity to submit a limited
response to a third party petition
with clear cut evidence of use or
highlighting flaws in the petition
in order to assist the director and
making the primer facie determination.
Yes, of course we.
We certainly have considered that
I'd like to hear your views on it
from an efficiency perspective.
It raises concerns in terms of trying to
move these proceedings through quickly,
but certainly we want to balance interest.
Again, you know, uh,
it's not an inner party.
Proceeding so it can be difficult to
add a lot of submissions between the
registrant and the petitioner and the like.
A third,
allowing a registrant to set aside
a default and reopen a proceeding if
the registrant can demonstrate that it
never receives the notices regarding
the filing of the petition or the
instituting institution of the proceedings.
In that case,
if there's a no response and the
the the the goods and services
are cancelled because of that,
a petition to the director is available.
As I said that,
that would be the remedy in this situation.
Lastly,
allowing a registrant to request an
extension of the two month response
period with the showing of good cause.
If folks would like to see that
we welcome comments on that
through the rulemaking process,
again, that will extend the proceedings.
Make them take longer,
and determining what is good.
'cause you know in those situations
again requires you know more scrutiny
by by the examiner and more time.
Uhm, OK, then with regard to.
3rd question with respect to the
X party proceedings initiated
by third party petition,
will the director consider
any evidence outside of the
petition in making the primer,
Facey determination will still
considering that we already had
that question still considering
of how to address that,
and have certainly happy to have your
comments on how far and why do you
think the director should look in trying
to evaluate the prime aphasia case.
Lastly, uh, let's see this is.
This is the patent model response
period comment OK under the
alternative proposal for office action
responses involve escalating fees?
What happens if the applicant files an
extension request and payment during
the initial two month response period,
but ends up needing more time than expected?
So again, this is that the patent model and
as I understand how the patent model works,
you're not requesting extensions
so much as you are filing when
you're ready so that you could.
File at the six month,
but you would have to have paid all of
the fees in order to get that six months,
which and they of course go up every month.
So I think that's how the patent model
worked it it's it's something that seems
a little bit complicated to implement,
but we would really like your comments
on it to see if that's something
that you all are are interested in.
Again, are.
Our main model was the three month
response period for all office actions?
Because we thought that was cleaner
and easier than than the other options.
And so we put that up front,
but we would love to hear what you all
think about all the different options.
And anymore that you have.
OK, so that's all the questions
that we got ahead of time.
And now we can turn to the questions
that have come into the box as
we have been speaking today.
So Bob, what's the first one?
OK,
first we have regarding registrants
ability to show use after being
challenged with an expungement.
Reexam proceeding is token use sufficient?
Or is there a minimum level that must
be established to overcome the action?
Also,
what if the registrant had some
use IE six months,
but then ceased use after that?
So I have some ideas about that.
You go right ahead.
Yeah OK,
so can you kind of suggested actual use,
so if it's the case that it's not actually
use and it's not going to be sufficient.
And as Amy mentioned before,
these are case by case determinations,
so we're going to have to see that
the you know we have to determine
that non use was was.
Established or or use was established
by preponderance of the evidence,
as the case may be.
Also, what if the resident had?
Six months at use,
six months ago with NCS or at
some point we have to remember
that both re examine expungement,
refer to specific use at a specific time.
Expungement of courses you're
stating that's never been used.
So if you can establish that
they use it at some point,
that that should be enough.
Uhm,
and then when we get into reexam proceedings,
the registrant's going to have to establish
that they used it as a relevant date.
So if that particular use that they
did use doesn't establish that,
then they're then they're out of luck.
Is there anything you wanted to add to that?
Amy? No, that was it. OK.
Uh. Next we had a question about
the flexible response periods,
and I think they were.
More than more than just this question
asked about the flexible response period.
But basically the question why is
this being considered a six month
period seems to be working well.
And then the related questions had to
do with the amount of time that we.
Ultimately ended up on in our proposal.
With regard to the answer this question,
the six month response period was
was built into the statute many,
many years ago when we were using paper
mail and LIFE has moved on since then and
we're in a much faster working environment.
The data shows that, you know,
probably if you, if you look at their,
how quickly applicants respond to
office actions a quite a few probably
half respond in the first month.
A man then? You know a quarter or respond,
you know, in between the first
month and then the 5th month,
and then the six months you've
got about another quarter.
So most are responding in
that first month or two.
And if that's the case,
then why are we holding on to the?
You know, why are we not?
It seems like it's not a big
impact to have have folks you know
they have the expectation that
we we need to move applications
through the system more quickly,
rather than letting them then languish
and and what we've heard from a
clearance perspective is that a lot
of applications are sitting there.
They're parked there and blocking new
entrants into on to the register,
and if we could get those through
faster than certainly that would
open up business opportunities for
others to get on the register.
So it really was a function that
Congress thought that moving
applications through the system more
quickly would allow new entrants into
the market and open up opportunities.
So certainly we're looking at
more flexible response periods in
order to accomplish those goals,
but Congress told us that we
can shorten to two months,
but we had to allow the extension.
All the way up to the full six months,
so six months is not going away.
It's still there.
It's just a matter of incentivizing
responses earlier so that we can
move applications more efficiently
through the system.
OK, moving on.
I realize I had skipped over one,
but it's also related to
another one we received later,
and it has to do with the timing
of the expungement petitions.
Uhm, so this question asks if expungement?
A can occur between the 3rd and
10th year after registration.
Is the assumption that the Section
8 was allowed for excusable nonuse?
Otherwise not clear how they managed
to keep the registration for more
than five years without showing use.
In the related question was whether
the registrant has to wait until the
first maintenance filing to file its its
its declaration of excusable nonuse.
Uhm?
I don't know if you want to take that Amy or,
well, I'll take the first one
from the expungement petition.
If a maintenance document was filed
and they submitted proof of use,
but it wasn't accurate, UM,
then and and a third party
petitioner had the evidence to show
that the mark was never in use,
that would be a situation where
expungement would be appropriate,
so it's where they've alleged use
to the USPTO in a maintenance filing
or in in the prosecution of the
application they've alleged use.
But it wasn't true and we weren't
able to catch it at the time because
we didn't have the evidence that
a third party had so.
In that situation,
it's not that they were not submitting
something and maintaining their registration,
it's they submitted something
that was not true.
What was the follow on to that Bob?
The follow on to that is basically
if they have excusable non use they
might want to hold on to their
goods and services and otherwise
they would have to wait until the
between the 5th and 6th year to
file that declaration of excusable
nonuse can they defensively and
proactively filed that declaration?
Prior to the normal maintenance period.
And I think that's something that we
should maybe gather some comments on.
Uhm, OK?
Sounds good,
but currently there is of course not a
mechanism for accepting a premature.
Non use decoration.
OK, next question.
Alright, this one I think has to do
with the letter of protest procedures.
If the USPTO examiner initially
issued an office action and rejected
the application due to a likelihood
of confusion with AUS registration
or prior pending application in such
rejection was traversed by the applicant,
will the letter of protest filed by
the interested party be reviewed by the
same examiner or a different examiner?
Or will a different examiner be assigned
to review the previous decision in new
evidence submitted with a letter of protest?
The answer to that is typically it's sent
back to the assigned examining attorney.
It's not typically sent to a
new examining attorney.
And the other question.
OK, that was the same question that
we already answered. Let me move on.
There was more additional
questions and concerns about
the flexible response period.
Why is the extension fees so high?
This may prejudice low income filers
and may force them to pay for council.
Will there be a sliding scale
for small and micro entities?
Bob, you might have to answer that one.
I don't. I'm I'm not finding it.
Well yeah, I mean currently we do
have not proposed the sliding scale,
but of course this is the you know,
the NPRM and we invite comments on on how
you think that might work in this context.
In terms of the extension fee, depending
on which one you're you're looking at,
the primary proposal I think was $125.
In that matches our extension fee for
filing a statement of use extension.
Alright, next question.
Could you spend a few moments
addressing how the rules may create
a perverse incentive to challenged
registrants to just file a new
application for the same mark and
the same goods or services for
which the mark is not in use?
Well, that. Uhm?
Let's see. Well, that may be true.
Isn't that always the case that if,
uh, if you get an office action and?
You can't respond to it that you
can just abandon and then refile.
And we're not necessarily tracking
that and and stopping you from
from refiling the same application.
So I hear what you're saying,
but I think that's kind of the
way that the system is built.
If you would like to see
a system where we block.
Block the person from refiling
the same person the same mark,
and how would you implement that?
The same person?
The same mark for the same goods and
services we we certainly would love to
hear if that's what you want us to do.
And then you know how you would,
how you would see implementing that.
Happy to take comments on that.
Anything to add on that Bob?
Uh, no I don't.
Uhm, OK.
Alright, next. Uh.
I note your articulated reason
for newly imposing a continuing
representation post registration.
It empowers the PTO to treat last
known council as counsel of record to,
for example, give notice of actions
under the new cancellation proceedings.
This potentially could impose an
onerous obligation on Council,
possibly impacting, for example,
subsequent claim of conflicts
years after that. Uhm?
Where there's been no service requested or
performed for the resident by that Council,
this may particularly impact situation
for the lawyer has only been retained
to register one or two marks.
And has no ongoing relationship
with the registrant.
A smaller practices may thus
be particularly impacted.
I understand this is a new requirement.
This new requirement allows Council
to withdraw, revoke, proactively.
Do you contemplate that the rules
allowing counsel to withdraw upon issuance?
Of the registration be more pro
form are different from current,
more onerous rules for withdrawal
or revocation.
So again,
I think this gets to the question of,
you know,
will our forms be updated accordingly
when we make this change to make
sure that we're contemplating all
the potential reasons for withdrawal
and the answer there is yes.
And again,
this is all within the context
of the professional rules of
conduct in your obligations there.
We have one more.
Yes, if the reason for changing
response period to three months is
to move the applications along,
why would there be a proposal to split
examination in formal examination
and then formal examination?
This is the EU model that
appears inefficient.
We're looking at a bunch of
different options of how to improve
the efficiency of examination,
and certainly I think you might all
be aware of the increase application
numbers that we're getting a.
It's a we're seeing quite a quite a
surge in applications that are coming in,
and we're trying to determine how to
improve the efficiency of examination,
improve the efficiency of the office and
and different models that will allow us.
To do that, and everything is on the table.
And so as we we looked at these
response period options.
You know, or as I said, our first,
our first option was, OK,
let's just go with three months
response period extendable one time,
up to six months and keep it.
Keep it easy and simple,
but as we were also at the same
time doing TMI rule package work,
we were also dealing with the surgeon.
We thought, well,
why don't we put other options in front of
stakeholders and see what they have to say?
If they think that would be an
interesting way to move forward.
What if we were able to, you know,
deal with formalities and it
by a set of formalities,
examiners or or that sort of thing.
You know the easier issues up front.
Handle those,
get everything in line and then
in a substantive examination.
Have the examining attorney's
focus on the substance of refusals
and not the formalities,
refusals.
We know countries around the
world actually like you said
in the EU and other countries,
they split formalities and substantive
examination and two different examining
core and and two different procedures.
Is that something that US stakeholders
think would be useful here?
I think your answer is no
inefficiency in the EU,
but we would love for for any input on
that as to how to move applications
more quickly and for those who,
for instance, you know or are.
Filing applications where they're not,
including all the information
in the application.
Why should that be sent to an examining
attorney to deal with all of that?
Why don't we have that handled separately?
But the only way to handle it
separately and make the requirements
is to have a flexible response period.
Otherwise,
every time we ask you to change
something in your address,
we have to give you a six month
response period.
UM.
And so it,
it kind of didn't make sense to to,
UM,
it doesn't make sense if you're
trying to knockout the formalities
examination first to give you a whole.
Six months and then come back with you know,
substantive examination.
Unless we could shorten it,
unless we could shorten it and get
get it all through faster that was.
That was one of the drivers
in US thinking about this,
but we have two different heads going on.
We've got the TMI implementation.
We've got the, you know,
the surge coming in and we're
trying to figure out if we can
have one one model that solves 2
problems for us.
And so we're looking for your input
to see what you think would be a.
You know, the the way to get get
things through the system and
make sure that new entrants.
Get on the register faster.
So I hope that answers the question.
Alright, uh C one came in.
While we were answering that one and it was.
Will the estoppel effect have a time
limit or will it be a permanent bar?
Is an interesting question.
It is permanent in the sense in
the context of these proceedings
that once we've kind of reached
that final determination of
whether there was use or non use,
you can't bring another action.
For on that same basis.
But I'll also note that these are
kind of limited by the Statute anyway,
so after a certain period you
can't file these so.
I hope that answers the question.
You can always go to the trademark
trial and appeal board though.
That does not bar the they
ex parte proceedings.
Do not bar inter partes proceedings on
the same registration for the same goods.
OK, is that all that we have here?
Bob, do you have anything more coming in?
I don't have anything more.
OK, there's anyone with their hand
raised or anything like that and
they want to submit a question,
but I I think we're it seems
like we're wrapping up.
Yes, it is, may I?
It is OK Allison. Uhm, yes,
that that issue with the stoppel.
I thought that that's relevant
to the interplay with the post
registration audit as well,
because if you're not supposed
to be able to challenge the goods
that were already challenged as
part of the non use proceeding,
you know a lot of times there's a
lot of synonymous or overlapping
goods and services in a registration,
and I think it could get into
some difficult issues of parsing.
Whether you know looking at something
that's in a different phrase.
Separated by semi colons is in fact
already been addressed in the earlier thing.
Secondly,
if the flexible response period is
supposed to make things go faster,
it seems to me that the patent model
produces uncertainty about what the
status of prior pending applications is.
'cause as I understand it,
they would be marked abandoned
after two months,
but they would have up until
six months to file an answer,
and so it seems like unless you're
going to wait the whole six months,
you know being blocked by prior,
pending or not going to go faster
'cause you're still going to
be waiting till six months.
Or you're going to let them go and
then they're gonna have to pull them
back when the response finally gets filed.
It perhaps the six months.
Thing that I forgot to mention previously,
but it's very important to me,
is if you do carry out this
proposal to wipe all of the attorney
information from the database.
The time that the rule changes.
Please do not remove the
attorney docket numbers.
It's one thing for us to go back
in and put our name and address
and bar information in,
but that's all static information.
We can put it in 300 at a time,
but having to put back in individual
unique matter numbers is a whole
different order of magnitude of work.
And I don't think there was anything
in the NPRM about the proposed burden.
Hourly or cost wise.
On trademark owners and their
attorneys of having to restore that
attorney information to the database.
Thank you.
Very helpful Allison.
Thank you for for that information.
I'll take that under advisement.
Anything there you want to respond to Bob?
Uhm, yeah I I'm not sure I
understood the last comment.
I think when we do transition,
if we if this rule does go into effect
for the attorney recognition rule,
I think our proposal was to leave
in the correspondence information
for the attorney but delete them as
the Attorney of record during that
transition transition period where we
want people to come in and re appear.
It specifically says the docket numbers.
Yeah, yeah, you're proposing to
delete the docket numbers too.
Yes, keep our correspondents info.
But my favorite thing else, OK?
OK, we look forward to your comments,
Allison.
As always.
OK, anything else come in?
Now that's all the questions
we've received for today. OK.
I'm going to turn it back over to you
to Tasha as the mistress of ceremonies.
Thank you, Amy and thank you to
everyone on the call for your
questions and comments today.
Now I will turn it over to
Deputy Chief Judge Mark Fuhrman
for to provide closing remarks.
Thank you, Tasha.
Can everyone hear me?
That's OK, I wanted to make a
couple of quick points here.
One is I want to reinforce the message
you heard throughout this program,
mainly from Amy, but also from Bob.
We really need your input and we
really need your formal comments,
so please provide those to us.
The more input we received,
the better the ultimate rules will be.
You guys are out there.
You know handling the the impact of
our rules and procedures so you know
and you can foresee certain things
that that might not occur to us.
And so the more information you can provide,
the less bumpy the road will
be once these new proceedings
and changes go into effect.
And then the second point I want
to make is just really kind of
enclosing is to return to the
theme that Commissioner good are
presented at the very start of this,
and that is the importance indeed
almost the sanctity of the register.
It is the the the bedrock of our
trademark system in the United States
and it's critical that it is as
accurate and reliable as possible.
It's been an ongoing concern for quite
sometime about registrations on the register.
Shouldn't be there.
The board in fact,
a few years ago implemented a pilot
program and expedited cancellation
pilot for this very reason to
look into whether or not we could
attempt to remove some of this
Deadwood more efficiently.
We had kind of mixed results of that pilot,
but one of the things we noticed was a
very high default rate and cancellation
petitions involving claims of non
use or vandament 50% or higher in
some cases up to 60% default rates.
That's a message that Chief
Judge Rogers and I have been.
You know,
making pretty consistently
for about two years now.
And it's an important point.
And I,
I think it it reinforces the
approach that Congress took in
the TMI to expand even more.
The ways to clean up the register
so the the involvement of the
board in these proceedings is
going to be primarily to appeal,
you know, to handle appeals.
And we do have the new expungement
proceeding, but it's all.
Part of a whole and so we we look forward
to implementing these new proceedings.
We welcome all of your input and we
all are in this together to try to
get the best register that we can.
But thank you.
Thank you. We did receive one last
question come while Deputy Chief Judge
Thurman was speaking and that was
a question about when do we expect
to put out the final rule package?
We do not have a set date to put out the
final rule package comments or do on the
notice of proposed rulemaking by July 19th.
So at that point.
Policy team led by Robert
Lavash and Amy Cotton,
will review the comments and begin
working on the final rulemaking and
the other date that I will point out
is that the Statute requires us to
implement for letters of protest and
the non use cancellation provisions
by one year after enactment,
which is December 27th, 2021.
Updates will be of course provided
on our website,
and so we encourage you all to subscribe
to trademark alerts if you are not already.
UM, also on our website as information
about providing formal comments.
Formal comments will be part of the
official record and as I just mentioned,
reviewed and responded to
in the final rulemaking.
They are due by July 19th and can
be submitted at www.regulationsgov.
A link to the slides from today's
presentation are posted at the bottom
of the TMI page on our website.
This roundtable was recorded and
the video will be made available
on the same page on our website
within two to three weeks.
We will email links to everyone
that registered for today's program.
Once the video is available.
Thank you all once again and
have a great rest of your day.