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Update from the USPTOTrademark News and Initiatives

Deborah S. CohnCommissioner for Trademarks

January 31, 2012

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Trademark Staffing

• 639 total Trademark employees

• 378 examining attorneys

• 90% of examining attorneys telework

• Hiring

–We are in the process of hiring a new class of examining attorneys

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Performance Results

• Application Filings• E-Government• Pendency • Quality

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Trademark Performance:Application Filings

• FY 2010: 368,939 classes

• FY 2011: 398,667 classes

• FY 2012 : projected 413,000 classes

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FY

200

2

FY

200

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FY

200

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FY

200

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FY

200

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FY

200

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FY

200

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FY

200

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FY

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FY

201

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FY

201

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-

50,000

100,000

150,000

200,000

250,000

300,000

350,000

400,000

450,000

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Trademark Performance:E-Government

• FY 2011 Goal: 68%

• FY 2011 Results: 73%

• FY 2012 Goal: 74%

• FY 2012 1st Quarter:75%

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Trademark Performance:Pendency

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FIRST ACTION PENDENCYFirst action pendency from date of filing to first office action in months.

3.1 2.5 – 3.5 3.2

DISPOSAL PENDENCYDisposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonment – including suspended and inter partes proceedings.

12.6 14.5 12.0

DISPOSAL PENDENCYDisposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonment – excluding suspended and inter partes proceedings.

10.5 12.5 10.2

Trademark Performance Measures

FY 2011Results

FY 2012 Targets

FY 2012 Q1

Results

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Trademark Performance:Quality

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FIRST ACTION COMPLIANCEIn-process review of the statutory bases for which the Office raises issues and or refuses marks for registration based on the first office action.

96.5% 95.5% 94.1%

FINAL ACTION COMPLIANCEIn-process review of the statutory bases for which the Office raises issues and or refuses marks for registration based on the examiner’s approval or denial of the application.

97.0% 97.0% 96.4%

EXCELLENT OFFICE ACTIONNew measure for FY 2011 indicating the comprehensive quality of the first Office action search, evidence, writing and decision making.

23.6% 20.0% 22.1%

Trademark Performance Measures

FY 2011Results

FY 2012 Targets

FY 2012 Q1

Results

New Performance Measure:Excellent Office Actions

Criteria for Excellence

1. Correctness in decision making

2. The quality of the search

3. Quality and relevance of evidence attached

4. Clarity of the written Office Action

Office action must meet all 4 criteria to be considered excellent

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Trademarks Dashboard

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User Outreach

• Paper Filer Focus Groups• Follow Up to Bose Roundtable• Disclaimer Roundtable• Litigation Study Meeting• Trilateral Meeting

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Paper Filer Focus Groups

• The USPTO strives to increase the use of electronic submissions.

• Trademarks held 6 focus groups throughout the U.S. on electronic communications with our users.

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Paper Filer Focus Groups

Major Issue from Focus Group: • Paper filers get earlier notice

of publication than those who have authorized electronic communications.

• As a result of the focus groups, electronic notices of publication are emailed when the paper advance notice normally sent.

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Best Method of Maintaining a Use-Based Register

• In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) changed the fraud standard from the line of cases following Medinol Ltd. V. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003).

• Bose raised issues of the integrity of register regarding allegations of use

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Best Method of Maintaining a Use-Based Register

• On July 12, 2011, the Office issued a Notice of Proposed Rule Making (NPRM) to allow the USPTO to require more information and specimens.

• Comments on the NPRM were accepted through September 23, 2011

• Working on final Rulemaking

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Disclaimer Roundtable

• On June 21, 2011, the USPTO held a disclaimer roundtable in response to recent changes to the laws in the UK, Australia and Canada eliminating disclaimers.

• New Examination Guide with additional examples and clarification of existing policy

Litigation Study Meeting

• On November 29, 2011, the USPTO held a meeting to discuss the feasibility of IP Bar Associations providing education regarding trademark policing measures and tactics.

• Working on future outreach to small businesses, individuals

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Trilateral Trademark Meeting

• The USPTO, European Union Trademark Office, Japanese Patent Office and Korean Intellectual Property Office met at USPTO on 12/5-7

• China (SAIC) and WIPO attended as observers (China has since joined as full member)

Recent Improvements

• Assignment Enhancements • TEAS

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Assignments on the Web

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• Notices of Recordation are now sent via email, not fax for those who authorize email.

• Underlying assignment documents are now viewable on our website.

Paper Filer Focus Groups

TEAS

The latest TEAS release incorporated 36 changes and upgrades.Highlights:• Multiple e-mail addresses• Multimedia files may be attached

in new applications• Saved portable forms will retain any

attachments.• teas@uspto.gov – for questions or

suggestions regarding electronic filing

TMNG:

Trademarks Next Generation

Trademarks Next Generation

Goals:

(1) Separate Trademark from Patent systems

(2) Become virtual

(3) Deploy a 21st century IT platform

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Trademarks Next Generation

• Internal and external users of Trademark systems were asked for their input.

• Over 300 suggestions were received.• tmideas@uspto.gov – for suggestions

for TMNG

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Trademarks Next Generation

• Trademark Status and Document Retrieval, (TSDR) was made live on December 19, 2011.

• Cloud based, TSDR combines TARR and TDR

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• Trademark Videos• TM Expo

Educating the Public

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• 10 videos now available to the public

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Educating the Public: TMIN Videos

Educating the Public: TMIN Videos

Introduction to the USPTO and Trademark Basics

Before You File

Searching

Applicant Information

Drawing Issues

Goods and Services

Filing Basis Information

Specimen

After You File

Post-Registration Issues

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Educating the Public: TM Expo

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USPTO Communications

Additional e-mail addresses for suggestions and feedback:

tmfeedback@uspto.gov – for miscellaneous suggestions and/or comments

tmtmep@uspto.gov – for suggestions for future revisions of the TMEP

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Thank You

Questions?

Deborah S. Cohn

Commissioner for Trademarks

Debbie.Cohn@uspto.gov

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