Update from the USPTO
Trademark News and Initiatives
Deborah S. Cohn
Commissioner 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
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•
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Application Filings
E-Government
Pendency
Quality
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Trademark Performance:
Application Filings
450,000
• FY 2010: 368,939
classes
400,000
350,000
300,000
• FY 2011: 398,667
classes
250,000
200,000
150,000
100,000
50,000
FY 2012
FY 2011
FY 2010
FY 2009
FY 2008
FY 2007
FY 2006
FY 2005
FY 2004
FY 2003
FY 2002
-
• FY 2012 : projected
413,000 classes
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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
Trademark Performance
Measures
FIRST ACTION PENDENCY
First action pendency from date of filing to first
office action in months.
FY 2011 FY 2012
Results Targets
FY 2012
Q1
Results
3.1
2.5 – 3.5
3.2
12.6
14.5
12.0
10.5
12.5
10.2
DISPOSAL PENDENCY
Disposal pendency from date of filing to issuance
of a notice of allowance, registration, or
abandonment – including suspended and inter
partes proceedings.
DISPOSAL PENDENCY
Disposal pendency from date of filing to issuance
of a notice of allowance, registration, or
abandonment – excluding suspended and inter
partes proceedings.
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Trademark Performance:
Quality
Trademark Performance
Measures
FY 2011
Results
FY 2012
Targets
FY 2012
Q1
Results
96.5%
95.5%
94.1%
97.0%
97.0%
96.4%
23.6%
20.0%
22.1%
FIRST ACTION COMPLIANCE
In-process review of the statutory bases for which
the Office raises issues and or refuses marks for
registration based on the first office action.
FINAL ACTION COMPLIANCE
In-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.
EXCELLENT OFFICE ACTION
New measure for FY 2011 indicating the
comprehensive quality of the first Office action
search, evidence, writing and decision making.
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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
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•
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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
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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
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)
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Recent Improvements
• Assignment Enhancements
• TEAS
Assignments on the Web
• Notices of Recordation are now sent
via email, not fax for those who authorize
email.
Paper Filer Focus Groups
• Underlying assignment documents
are now viewable on our website.
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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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Educating the Public
• Trademark Videos
• TM Expo
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Educating the Public: TMIN Videos
• 10 videos now available to the public
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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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