View
214
Download
0
Category
Tags:
Preview:
Citation preview
11
Update from the USPTOTrademark News and Initiatives
Deborah S. CohnCommissioner for Trademarks
January 31, 2012
2
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
2
3
Performance Results
• Application Filings• E-Government• Pendency • Quality
4
Trademark Performance:Application Filings
• FY 2010: 368,939 classes
• FY 2011: 398,667 classes
• FY 2012 : projected 413,000 classes
4
FY
200
2
FY
200
3
FY
200
4
FY
200
5
FY
200
6
FY
200
7
FY
200
8
FY
200
9
FY
201
0
FY
201
1
FY
201
2
-
50,000
100,000
150,000
200,000
250,000
300,000
350,000
400,000
450,000
5
Trademark Performance:E-Government
• FY 2011 Goal: 68%
• FY 2011 Results: 73%
• FY 2012 Goal: 74%
• FY 2012 1st Quarter:75%
5
6
Trademark Performance:Pendency
6
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
7
Trademark Performance:Quality
7
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
8
Trademarks Dashboard
9
10
User Outreach
• Paper Filer Focus Groups• Follow Up to Bose Roundtable• Disclaimer Roundtable• Litigation Study Meeting• Trilateral Meeting
11
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.
11
12
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.
13
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
13
14
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
14
15
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
17
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
19
Assignments on the Web
19
• 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
22
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
23
Trademarks Next Generation
• Trademark Status and Document Retrieval, (TSDR) was made live on December 19, 2011.
• Cloud based, TSDR combines TARR and TDR
24
25
• Trademark Videos• TM Expo
Educating the Public
26
• 10 videos now available to the public
26
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
2727
28
Educating the Public: TM Expo
29
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
29
30
Thank You
Questions?
Deborah S. Cohn
Commissioner for Trademarks
Debbie.Cohn@uspto.gov
30
Recommended