Trademarks Moving Forward

Guest blog by Commissioner for Trademarks Mary Boney Denison

Our Trademarks Team is leading efforts to meet the continually changing intellectual property environment – by updating our IT systems, developing educational outreach programs, improving the accuracy and integrity of the trademark register, and ensuring that our trademark fees are fair and that they reflect the full cost of our services and products. It is our ongoing commitment to ensure accountability and to guarantee customer satisfaction.

As part of our multi-year effort to update our IT systems, I am pleased to announce that we have established the Office of the Deputy Commissioner for Trademark Administration to support IT, finance, and strategic planning. Earlier this month, Greg Dodson joined USPTO to fill this role. Greg’s primary responsibilities will be to manage the completion and transformation of the next generation of Trademark electronic systems, lead the financial management of the Trademark Organization, and guide the strategic vision of the Trademark Organization. A retired Air Force Colonel, Greg is a strong strategic thinker and an experienced senior leader who has led thousands in the U.S. and abroad throughout his career. His most recent position was a Senior Analyst and A2AD Subject Matter Expert in General Dynamics’ War Gaming Division. Greg has a Bachelor of Science degree in Management Information Systems from Florida State University, a Master of Science in National Resource Strategy from the National Defense University, and a Masters of Education in International Relations from Northwestern Oklahoma State University.

The Deputy Commissioner for Trademark Administration will be supported by two newly created senior level positions: the Information Technology Administrator and the Information Technology Legal Administrator. Information Technology Administrator Glen Brown is our subject matter expert for the continued development of Trademark IT systems, and Information Technology Legal Administrator Tanya Amos will serve as our subject matter expert for the interactions of Trademark applicants and their attorneys regarding Trademark IT systems.

Additionally, Trademarks is actively engaged in developing educational outreach programs that will offer the best possible intellectual property (IP) guidance and training to all. One of the ways in which we are educating the public is through a series of videos from our Trademark Information Network (TMIN). There are numerous videos covering an array of subject matters. One of our most popular videos, “Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later,” has now surpassed 500,000 views. It is quite apparent that the public sees value in these learning materials. We will continue to provide this service and look forward to expanding upon it in the future. We know that trademark litigation has the potential to harm small businesses, and we are committed to providing our stakeholders with resources to promote understanding of trademark basics, enforcement measures, and available tools for protecting and enforcing trademark rights.

Moreover, Trademarks is continually taking strides to improve the accuracy and integrity of the trademark register. In 2012, the USPTO instituted a pilot program which required additional specimens or other proof of use in connection with 500 randomly selected Section 8 or 71 Affidavits of Continued Use. At the conclusion of the pilot, the USPTO determined that in more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods/services queried. This was in spite of the owner having previously sworn to such ongoing use as part of a Section 8 or 71 affidavit filed to maintain the registration. We issued a report on the results and held a roundtable to discuss the results and next steps. The results of the pilot are available on the Trademarks Recent Postings page on the USPTO website. The consensus among roundtable participants was that the results of the pilot program indicated a need for some action to improve the accuracy and integrity of the register.

We at the USPTO agree with this conclusion and are now working to make the random audits permanent and to increase the solemnity of the declaration for Sec. 8 affidavits. A Notice of Proposed Rulemaking (NPRM) to make our random audits program permanent published June 22 in the Federal Register. Increasing the solemnity of the declaration does not require a rule change, but, later this summer, we plan to post the new language on Ideascale, an interactive online program that allows you to provide suggestions and comments. Additionally, we are considering proposing one or more new or revised procedures to cancel registrations for marks that are either no longer in use or have never been used. On April 28, the Trademark Public Advisory Committee convened an executive session to discuss the possibility of a new expungement procedure as well as several streamlined TTAB cancellation procedures. Preliminary meetings have since begun with various stakeholder groups and will continue over the next month to discuss our ideas and obtain feedback to aid us in fully developing the concepts.

Finally, last month, Trademarks published an NPRM to modify some of our fees. The purpose of this fee proposal is to further USPTO strategic objectives by: (1) better aligning fees with the full cost of products and services; (2) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials; and (3) promoting the efficiency of the process, in large part through lower-cost electronic filing options.

We hope to implement these fee changes in January 2017. Some key proposals are:
• Increase the fee for the paper filed application for registration by $225 to $600 per class.
• Increase fees for all other paper filings by $100 per class.
• Increase the fee for a regular TEAS application for registration by $75 to $400 per class.
• Increase the fee for failing to meet TEAS Plus or TEAS RF requirements from $50 to $125 per class.
• Increase fees for filing an affidavit of use under section 8 and 71 by $50 for filing electronically or $150 for filing on paper.
• Increase the fee for filing an ex parte appeal from $100 to $200.
• Increase the fees for filing oppositions and cancellations from $300 to $400.

By modifying these fees, we hope to discourage paper filings and responses (which cost the office more to process), further incentivize electronic filing and communication, and promote fairness so that the cost of paper processing is not being subsidized by electronic filers. Comments on the fee proposals are due by July 11, 2016. Please let us know what you think.

The Trademarks Team remains committed to increasing the efficiency of its processes and procedures. We are excited about moving forward, as we enhance our customers’ experience of doing business with the USPTO.