United States Patent and Trademark Office Updates
Stay updated on the latest news and updates from the United States Patent and Trademark Office (USPTO) including trademark application filing levels, staffing information, performance measures, and e-government initiatives. Learn about fee levels for different types of trademark applications and the focus on quality and efficiency in trademark examination policies.
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Trademark News and Updates from the United States Patent and Trademark Office Sharon Marsh Deputy Commissioner for Trademark Examination Policy
New Application Filing Levels FY 2015: 503,889 classes; increase of 10.7% from FY2014 FY 2014: 455,017 classes Swings ranged from a 27% increase (1999 and 2000) to a 21% decrease (2001) Expect 7% to 8% increases from 2016 through 2020
Trademark Staffing 742 Trademark employees 474 examining attorneys (63% of Trademarks) 86% of examining attorneys telework and 75% telework full time Examining attorneys are located in 29 different states; Telework Enhancement Act Pilot Program (TEAPP) Hired 43 examining attorneys in FY15; We will be hiring again in FY16. The first class of 20 started in November; additional hiring in the spring
Trademark Performance: Quality FY 2016 Q1 Results FY 2015 Trademark Performance Measures FY 2016 Targets First Action Compliance In-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. Final Action Compliance In-process review evaluation 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. Exceptional Office Action Measure indicating the comprehensive quality of the first Office action search, evidence, writing and decision making. 95.5% 96.6% 97.0% 97.5% 36.0% 52.9%
FY 16 Trademark Performance Measures Pendency Goals 2.5 to 3.5 months to first action 12 months to disposal 2015: translates to 967,400 first actions plus disposal actions Quality Goals 95.5% compliance on first actions 97.0% compliance on final actions 40.0% exceptional Office actions E-Government 80% of applications are processed entirely electronically
Initial Application Fee Levels TEAS Plus Application: $225 per class of goods/services TEAS Reduced Fee (RF) Application*: $275 per class of goods/services TEAS Regular Application: $325 per class of goods/services Paper Application: $375 per class of goods/services *Option introduced January 17, 2015
Trademark Fee Proposal The Leahy Smith America Invents Act (AIA) mandates that trademark fees be set to recover the prospective aggregate cost of trademark operations - leaving a zero net cost to general taxpayers. Therefore, fees must be set at levels projected to cover the cost of future budgetary requirements. Increases to fees for paper filing and processing fees Increases to existing TTAB fees Establish an extension of time fee for TTAB matters TPAC hearing on November 3, 2015.
Trademark Fee Proposal The proposed changes impact the following fee categories : Paper Filing Fees Extension of Time for Filing a Statement of Use Petitions to the Director Dividing an Application Trademark Trial and Appeal Board Fees Extension of Time for Filing a Notice of Opposition
Trademarks Next Generation (TMNG) We continue to update and modernize our systems Release of new Trademark ID Manual
Increase in Attachment Size We have increased the attachment size from 5mb to 30mb. This should be more than ample space for responses to Office Actions
Public Access to Trademark Information Subscribe to Trademarks Alerts On the USPTO homepage: News & Updates Subscribe to updates Check Trademark Updates and Announceents On the USPTO homepage:
Post Registration Amendments to IDs Due to Technology Evolution Pilot Commenced September 1, 2015 View full announcement at www.uspto.gov/sites/default/files/documents/Technolog y_Evolution_Pilot_Program.docx
Specific Requirements for Post Registration Technology Amendment Petitioner must: Request waiver of ID scope rule due to extraordinary circumstances Demonstrate justice supports waiver and not other party injured Declare that due to technology change, cannot show use of original goods/services Declare still using mark on new technological goods/services where content is the same Declare that if not allowed to make change, petitioner would be forced to delete good/services See http://www.uspto.gov/trademark/trademark-updates- and-announcements/recent-postings for sample declaration
Proof of Use Pilot Results Percentage of Registrations Selected for the Pilot Deleting Goods/Services Queried Under the Pilot Percentage of Registrations Selected for the Pilot Receiving Notices of Cancellation Percentage of Registrations Selected for the Pilot Receiving Notices of Acceptance (Including for a Narrowed Scope of Goods/Services) Basis for Registration Section 1(a) Section 44(e) Section 66(a) Combined Section 1(a) and 44(e) 28% 58% 57% 56% 17% 7% 14% 12.5% 83% 93% 86% 87.5%
Proof of Use Specimen Pilot Post Registration Pilot to assess the accuracy and integrity of the Register Results indicate that action by the USPTO is necessary: Random audits Declaration averments Non-use expungement proceedings
Letters of Protest Letter of Protest pre-publication post-publication clear error Total number of Letters of Protest assigned and worked on in FY 2015: 2,203
Letters of Protest Pre-publication LoPs handled: 1,890 Percentage of LoPs granted: 77% Percentage of LoPs granted in which Examining Attorney issued an Office action: 50% Post Publication LoPs handled: 313 Percentage granted: 6.7%
TMEP October 2015 update Exam Guide on Marks Consisting of Repeating Patterns Draft Exam Guide on Marks Consisting of or Featuring Titles of, Names of Characters From, or Depictions of Characters From, Creative Works
TM-5 Comprised of the 5 largest trademark offices: the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market (OHIM), the Trademark Office of the State Administration of Industry and Commerce of the People s Republic of China (SAIC), and the United States Patent and Trademark Office (USPTO) Focus on exchange of information and collaboration and harmonization projects regarding trademark matters to benefit users Website: http://tmfive.org/ TM5 Midterm Meeting at INTA s Annual Meeting in May USPTO Hosted Annual Meeting December 1-2, 2015
Congressional Trademark Caucus Co-Chairs: Senator Chuck Grassley (R-IA), Senator Chris Coons (D-DE), Rep. Randy Forbes (VA-04) and Rep. Suzan DelBene (WA-01) First Congressional Caucus dedicated solely to trademark issues and matters of importance to consumers. The bipartisan, bicameral Congressional Trademark Caucus will serve to educate Members of Congress and the public about the vital role trademarks and brands play in protecting the health and safety of consumers in the global marketplace.
Regional Offices San Jose and Dallas are Open! Joining Denver and Detroit
IP Attache Program Began in 2006 Goals and Objectives: To encourage strong IPR protection and enforcement by U.S. trading partners for the benefit of U.S. rights holders. To promote U.S. government IPR policy internationally. To help secure strong IPR provisions in international agreements and host country laws. Contact them at www.uspto.gov/ipattache
IP Attache Program (cont.) Where are we? The IPR Attach Program has placed individuals in the following seven countries: Bangkok, Thailand; Beijing, China; Guangzhou, China; Moscow, Russia; New Delhi, India; Rio de Janeiro, Brazil; and Cairo, Egypt.
Practice Tips See: http://www.uspto.gov/trademark/guides-manuals-resources/practice-tips
Suggestions We want to hear from you! E-mail TMFeedback@uspto.gov Contact the Managing or Senior Supervisory Attorney if you cannot reach the examining attorney Stay Informed: Subscribe to TM Alerts: http://www.uspto.gov/trademark/trademark-updates- and-announcements/subscribing-trademark-alert-emails
Thank You! Sharon Marsh Deputy Commissioner for Trademark Examination Policy sharon.marsh@uspto.gov
