Post on 30-May-2018
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Meryl Hershkowitz
Trademark Group DirectorMarch 10, 2009
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Trademark Updates
Statistics Whats New in
Policy andProcedure
Latest TTAB Casesand Pending Casesat the FederalCircuit
Petition Practice inlight ofMedinol
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Examination Statistics
Filing, production, quality and otherexamination matters
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FY 2009 Trademark Performance Measures Quarter 1 FY 2008Results
FY 2009
TargetsFY 2009
Qtr. 1 ResultsFY 2009
Variance
QUALITY
Improve examination quality of Trademarks as indicated by the compliance rate determined through anin-process review evaluation of the statutory bases for which the Office raises issues and or refuses
marks for registration based on the first office action and the examiners approval or denial of theapplication[1]:
First Office Action:
95.8%Final Action:
97.2 %
First Office Action:
95.5%Final:
96%
First Office Action:
96.4%Final:
97.5%
+.94%
+.52%
E-GOV
Increase the use of electronic filing and processing as measured by the percent of applications for theregistration of a trademark that are processed electronically[2].
62% 60.2% -2.9%
APPLICATION FILINGS Classes
Increase/Decrease from the prior year401,392
1.8%390,000
-2.8%89,137
-10.7%-2.2%
Examiner PRODUCTION
Initial Exam First ActionsExaminer Disposals abandonments and approval for publication
Examiner Balanced Disposals first actions plus disposals
415,896
437,315853,211
390,000
413,000803,000
108,993
106,976215,969
+18.2%
+9.2%+13.5%
Examiner FTE 382.2 380 98.95 4.2%
Productivity Balanced Disposals per Examiner FTE 2,232 2,113 2,183 +2.3%
Productivity Balanced Disposals per Examiner FTE including comp/credit hours 2,192 2,058 2,166 +5.2%
Office Disposals abandonments and registrations
Registrations
430,343
274,250
358,100
226,000
101,570
60,232
+13.5%
+6.6%
PENDENCY
First action pendency from date of filing to first office action in months.3.0 2.5 3.5 2.8 On target
PENDENCY
Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonmentincluding suspended and inter partes proceedings.
13.9 16.0 14.3 -10.6%
PENDENCY
Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonmentexcluding suspended and inter partes proceedings.
11.8 13.5 12.0 -11.1%
EFFICIENCY
Improve the efficiency of the trademark process as measured by the average cost of a trademark disposalcompared to trademark direct and indirect costs. Actual results are based on total trademark related
expenditures compared to office disposals.
$470 $632 $474 -25%
FY 2008 2009 Performance
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Quality
Goal: Improve examination quality asmeasured by compliance rates The compliance rate is measure of the percent of
actions that have been determined to have nodeficiencies or errors
2008 Results First Action Compliance: 95.8% Final Action Compliance: 97.2%We will be changing the universe of files considered
for our final action compliance rate this year.
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Quality
Quality of Trademark Examination FY 2009 Compliance Rate
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Pendency - 2009
Target for first action pendency is between 2.5 and 3.5 months First action pendency at the end of fiscal year was 3.0 months Disposal pendency was 11.8 months for applications without
inter partes or suspensions and 13.9 months for applicationsincluding suspended and inter partes cases at end of FY08
In FY09 the target for first action pendency will be 2.5 3.5months and the target for disposal pendency will be to keep the
pendency for cases that include inter partes and suspendedcases will be 13 months
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First Action Pendency
FY08 monthly pendency distribution months from filing to first office action
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E-Government
Goal: Increase the percentage of applicationsfiled electronically
FY 07 95.4% of applications filed via TEAS FY 08 Target: 95% FY 08 results: 96.9% 2009 electronic measure - percent of
disposals that are handled by electronic filingand processing (currently 51%)
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E-government
Disposal pendency by types of filings FY 2008:
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First Action Approvals for Pub
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Application Filings
394,368 application classes were filed in FY 07 an 11.2% increase over FY 06
401,392 applications filed in FY08 a 1.8%increase over FY 07
Application filings expected in FY09 363,000 classes -10.0% compared to FY08
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Applications have increased at about 7% per year for the past 10 years.
Historical Application Filing
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Filing Levels/Historic Events
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Examining Attorney Production
Based on balanced disposals (1st actions,approvals, abandonments).
Target is number of BDs we estimate to benecessary to maintain first action pendencybetween 2.5 and 3.5 months
FY 2007 BDs: 900,808 FY 08 BDs : 853,211 FY 09 target: 772,000
Declining numbers represent lower filings and asmaller staffbut maintaining 3 month pendency
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Examining Attorney Staffing
FY 2007 401 FTE (Full Time Equivalent)Examining Attorneys
FY 08 examining attorney FTE was 382.2 FY 09 examining attorney FTE target is 380.
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Telework
The USPTO Trademark telework program has beenrecognized as a success throughout the federalgovernment.
The Agency celebrated the 10th anniversary of thisprogram in 2007 85% of eligible trademark examining attorneys now
work from home nearly full time 52% of all Trademark employees work from home at
least part of their work week. In 2008, the Trademark Assistance Center was
recognized with the Tele-Vision award as the firstfederal call center with a very successful work-at-home program
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2009 Challenges
Managing in the turbulent economy Organizational Assessments
Streamline processes Increase efficiency Eliminate unnecessary steps
Improve Quality New form paragraph system Training and guidelines excellent first action process
Expand electronic workflow
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-Publication and Issue Statistics
More than 50% of the marks being approvedfor publication have 6 month or less
pendency More than 5% of the marks being registered
have less than 7 month pendency
Paris Convention issues? The process is getting faster and that trend is
expected to continue
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Database Information
1,525,871 registered marks in TESS (2/18) 5,046,610 application records in the TESS 449,644 pending applications One year of the Official Gazette is now on the
website
TDRscanning is almost complete! Less than 15,000 registration files have not been
scanned into TDR
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E-registration
Proposal to eliminate automatic issuance of apaper registration certificate
USPTO will send a your registration hasissued notice
Option to purchase a simple paper copy Option to purchase a certified status and title
record
On hold technical difficulties
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Proposed Format - Revised Certificate
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Proposed Format - Revised Certificate
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Proposed Format - Revised Certificate
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Proposed Format - Revised Certificate
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Letters of Protest
New standard if LOP filed before publicationin Official Gazette (Exam Guide 4-08)
Office will grant LOP filed before publicationin all cases where the evidence is relevantand supports any reasonable ground forrefusal in ex parte examination
Examining Attorney required to considerevidence, but not required to issue refusal
No change in standard after publication:clear error
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Consistency Initiative
The Office now allows applicants to requestreview of certain inconsistencies in
examination through a new e-mail box:TMconsistency@uspto.gov
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Tagging Official Correspondence
Each of the pre-written paragraphs (formparagraphs) used to compose official
examination correspondence are nowelectronically tagged
Tagging will allow data collection regarding: Frequency of issuing specific refusals and
requirements Identification of examination issues where
additional training would improve quality
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C.F.R. Rules
All pending rules are temporarily on holdeven the non-controversial signature rules
Miscellaneous rules changes were effectiveJanuary 16, 2009 Summary on USPTO website
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Miscellaneous Rules Changes
Section 44 and 66(a) applications notsubject to concurrent use. Rules 2.73 and
2.99(g) Applicants may not reinsert goods or services
omitted from a paper SOU. Rule 2.88(i)(2)
Post Registration - Conforming amendmentsto disclaimer, description of the mark, ormiscellaneous statement may be requiredwhen an owner files a request to amend aregistration under 7. Rules 2.173(f) and (g)
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Recent TTAB Cases
Section 2(a)
In re Heeb Media, LLC, 89 USPQ2d 1071 (TTAB2008
Descriptiveness - Section 2(e)(1)
In re Leonhardt, ___ USPQ2d ___, Serial No.78666879 (TTAB November 13, 2008)
In re BetaBatt, Inc., 89 USPQ2d 1152 (TTAB 2008)Ownership of Marks Implied License Ballet Tech Foundation, Inc. v. The Joyce Theater
Foundation, Inc., ____USPQ2d ____ Oppos. No.91180789, Canc. No. 92042019 (TTAB December11, 2008)
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Pending Federal Circuit Appeals
MOSKOVSAYA 2(a) and 2(e)(3) case 74-382759 BOSE fraud case.91-157315
COCAINE 2(a) scandalous case (77-062212) SHINNECOCK 2a false connection cases
(78-918061 and 78-918500)
ONE NATION UNDER GOD website specimen case(78-717427)
IN RE ELECTRO BAND 2d likelihood of confusion(77-038241)
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Medinol updates
BOSE fraud case.91-157315 At the CAFC Office requested to be substituted for the opposer Issue is Boses claim of use of the mark on audio
cassette players and tape recorders in its affidavitof continued use
G&W Laboratories, Inc v. G W PharmaLimited 01/29/09 pro#91169571
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Petitions to the Director
Applicants, registrants, and parties to inter partesproceedings before the TTAB
who believe they have been injured by certain adverseactions of the USPTO, or
who believe that they cannot comply with the requirementsof the Trademark Rules of Practice (37 C.F.R. Part 2)because of an extraordinary situation
may seek equitable relief by filing a petition under 37
C.F.R. 2.146.
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Medinoland Petitions to theDirector
Since Medinolandmore recent TTAB cases on fraud, there hasbeen a steady increase in requests from outside attorneys to:
Withdraw inadvertently filed documents and/or rescind prioracceptance or acknowledgement of Section 8 affidavits ofcontinued use and Section 15 affidavits of incontestability
Submit clarifying information or make information of record Amend the basis of an application from 1(a) to 1(b) post
publication
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Requests to Withdraw/Rescind
We instruct customers that requests towithdraw/rescind are only handled on petition
$100 petition fee is required Generally, we do not remove any documentsfrom Office records (duty to preserveintegrity). We may remove or redactconfidential information not relied on during
examination. We generally agree not to examine a
previouslyfiled document.
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Requests to Withdraw/Rescind
We have refused to rescind prior acceptance of aSection 8 affidavit or grant of Section 9 renewalapplication
Registrant may submit corrective filings (these arenot examined), delete certain goods/services from theregistration or surrender the registration
We have agreed to update Office records toabandon a Section 15 affidavit of incontestability
even after acknowledgement by the Office(discretionary filing)
No refund of associated filing fee
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Petitions to Amend Basis
Post publication amendments to basis onlyconsidered after a petition to the Director is granted
Petitions granted when it is too late to withdrawapplication from publication and all of the goods areamended from 1(a) to 1(b) or a request to divide isfiled
$100 petition fee Application returned to examination to consider
amendment
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Petitions
If an applicant or attorney requests removal of adocument or information from the Official
record Petition required in most cases Direct them to the staff attorney on duty in the
Petitions Office (571) 272-8950
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Thank You
Questions? Meryl.hershkowitz@uspto.gov www.uspto.gov