COMMITTEE 203 � PATENT TRADEMARK OFFICE AFFAIRS � TRADEMARKS

COMMITTEE 203 – PATENT & TRADEMARK OFFICE AFFAIRS – TRADEMARKS Jim Vana, Chair Read committee reports from 1997-2003. Scope of Committee: The Committee focuses on the trademark operations of the Patent & Trademark Office (PTO) including the Trademark Examining Operation and the Trademark Trial and Appeal Board. NO PROPOSED RESOLUTIONS. This year, the Committee divided its focus into three areas, each with its own subcommittee: (1) Madrid Protocol, which concentrated on the implementation of the Protocol and resulting rule changes; (2) Trademark Office Seminar, which coordinated a seminar titled "ABA and AIPLA Meet the Trademark Office"; and (3) Other PTO Office Affairs, which tracked the status of fee diversion of budgeted PTO resources and also reviewed the effect of the 2002 reduction in force on the pendancy of first office actions. Subcommittee 1: Madrid Protocol Past Action. The 2003 final report of Committee 203 summarizes the steps taken to implement the Madrid Protocol (the "Protocol"). The Protocol was actually implemented on November 2, 2003. Discussion. Through the first five months of the Protocol's implementation, the Trademark Office reports that both inbound and outbound filings have been consistent with the modest increases experienced by other countries immediately following implementation. The PTO had planned to have all filing for International Registrations under the Protocol be electronic. However, due to difficulties with the electronic forms for these filings, that plan has been delayed. Implementation of the Protocol has resulted in several changes to the rules governing trademark applications and registrations. This subcommittee has summarized these rule changes, and that summary is attached as Exhibit A to this report. Subcommittee 2: "ABA Meets the Trademark Office" Day Past Action: None. Discussion. In conjunction with the American Intellectual Property Law Association, this subcommittee coordinated a day-long meeting with senior members of the Trademark Office. Speakers from the Office included Commissioner Anne Chasser and TTAB Chief Judge David Sams. The event concluded with a tour of the PTO's new facilities at its Carlisle campus in Alexandria, Virginia. The agenda for this event is attached as Exhibit B to this report. Subcommittee 3: Other Trademark Office Affairs [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] 12/31/08 Past Action: None Discussion A. Fee Diversion. The USPTO fiscal year 2004 began on October 1, 2003. PTO funding is contained in the Commerce Justice State Appropriations Act. On March 3, the House passed the United States Patent and Trademark Fee Modernization Act of 2003 (H.R. 1561) to raise patent fees and redirect the money back to the PTO. Part of the reason for this change is to reduce application backlog. The bill was referred to the Senate Committee after being received from the House. H.R. 1561 would increase PTO user fees by an average of 15% in order to raise an additional $200 million per year that the Office believes to be needed to implement its 21st Century Strategic Plan. The Plan is designed to improve quality, reduce pendency, and speed transition to e-processing. H.R. 1561 contains provisions, supported by the ABA and a broad coalition of IP associations, organizations, and companies, that are designed to end the practice of fee diversion (diverting PTO fee revenue to fund unrelated government programs by failure to appropriate back to the Office the full amount of fees collected). H.R. 1561 includes a provision to preclude diversion by requiring that all fee collections in excess of the amount appropriated for use of the PTO be rebated to those who paid the fees, thereby eliminating any amounts available for diversion. Committee 203 strongly supports H.R. 1561's effort to eliminate the diversion of PTO resources. B. Impact of Reduction in Force. Although an end to fee diversion would be a positive development for the PTO, this subcommittee's research leads to the conclusion that this development would benefit the patent examination operation more than the trademark examination operation. To understand this conclusion, it is important to discuss the three primary variables involved in the trademark examination operation: (1) the number of trademark applications; (2) the number of examiners; and (3) the productivity required of each examiner. Trademark application numbers have reflected changes in the economy over the last several years. From a high of 288,600 in 2000, applications fell to a recent low of 215,400 in 2002. Applications have grown modestly since then, to 223,000 in 2003 (a 3.2 percent increase) and 230,000 (projected) for FY '04. As the U.S. economy grew through the late 1990's, the Trademark Office added examining attorneys. The examining corps reached 383 immediately preceding the RIF. Following the RIF in late 2002, there were roughly 250 examiners. Currently, that number is 256. Trademark examiners are governed by a Performance Appraisal Plan ("PAP"), which outlines quality and productivity requirements. Points are awarded for various actions [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -2- 12/31/08 (refusals, approval for publication, etc.). Currently, examiners must average roughly one point every 48 minutes. Current PTO plans call for the hiring of approximately 2,900 additional patent examiners. While the PTO is planning to hire approximately 20 additional trademark examining attorneys, more than 130 attorneys were let go as a result of the RIF. The RIF, coupled with subsequent increases in the number of trademark applications filed in 2003 and 2004 (projected), has had a direct impact on pendancy (the amount of time between the application filing date and the first action taken by an examiner).At the time of the RIF, the PTO promised Congress that pendency would be at 2.5 months by the end of fiscal year 2003. However, pendancy was at 4.4 months by the end of FY '03.. Consequently, the PTO re-adjusted its goals upward, promising to get to 5.4 months by end of FY '04. Pendancy is now at 6.2 months. The Trademark Office is currently negotiating a new PAP with the union for trademark examiners. While details of the proposed PAP are not public, comments from those familiar with the negotiations suggest that the PAP will require substantial productivity increases. Clearly, one result of such increased productivity will be a decrease in pendancy. However, some examiners, as well as some members of the outside bar, have expressed concern that increased productivity requirements could result in lower quality work. One alternative (in whole or in part) to increasing per examiner productivity would be to hire more examiners. This committee also feels that additional training for examiners would be beneficial, and commends the recent implementation of e-learning modules for examiners. Assuming available funding, this committee recommends that the Trademark Office consider additional training and the hiring of additional examining attorneys as an alternative or a complement to increased productivity requirements. [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -3- 12/31/08 EXHIBIT A SUMMARY OF RULES OF PRACTICE FOR TRADEMARK RELATED FILINGS UNDER THE MADRID PROTOCOL IMPLEMENTATION ACT The Madrid Protocol provides a system for obtaining an international trademark registration (“IR”). An IR is simply a vehicle through which the owner of the registration can make a request to designated countries for an extension of protection (“REP”) of the mark which is the subject of the IR. The International Bureau (“IB”) of the World Intellectual Property Organization maintains the system and acts as a gatekeeper for applications for IRs and REPs once the IR has issued. Much has been written on the Madrid Protocol and operation of the system. This summary will not attempt to cover the entire system, but rather will focus on the new and amended regulations promulgated by the United States Patent and Trademark Office in connection with implementation of the Madrid Protocol Implementation Act and as part of an effort to clarify and improve the procedures for processing trademark applications and conducting proceedings before the Trademark Trial and Appeal Board. The new rules are added as part 7 of 37 CFR. The amended rules pertain to part 2 of 37 CFR. 37 CFR, Parts 2 and 7 This summary will not attempt to cover every new rule. It will summarize by highlighting the new and amended rules which affect the process for an outbound application for an IR (a U.S. entity seeking an IR) and the process for an inbound request for extension of protection from a foreign entity seeking an extension of protection in the U.S. under an IR . Outbound 1.   Submission of the IR Application must be submitted to the USPTO through TEAS. §7.11(a) Application must be based on a U.S. application or registration (“Basic”). §7.11(a) and conform to the following:   Filing/issuance date and serial/registration number of Basic All information in IR application must be identical to information in Basic except goods and services identification can be narrower and classifications can be changed If Basic mark is depicted in black and white but there is a claim of color then the IR application must include both black and white as well as color reproduction of the mark  [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -4- 12/31/08  Application must designate one or more Madrid Protocol countries in which an extension of protection of the IR is sought  USPTO will certify and forward the IR application to the IB §7.13(a)     USPTO grants a date of receipt of IR application: the date and time (EST) the IR application transmission through TEAS was received in the USPTO §7.04 Must be forwarded to IB within 2 months in order to maintain application date USPTO certifies that the IR application meets the requirements of §7.11(a) If USPTO cannot certify, fee for IR application is returned, but not certification fee §7.13(b) 2. Responding to Irregularities     IB notifies both applicant and the USPTO of any irregularities Some irregularities must be corrected through the USPTO §7.14(b) All others can be corrected either through the USPTO or directly at the IB §7.14(d) Responses must be received by the IB before the end of the response period set forth in the IB notice if irregularity. Receipt in the USPTO is not receipt at the IB. Responses through the USPTO must use TEAS and must be submitted at least one month before the end of the response deadline set forth in the IB notice of irregularity. §7.14(e) All fees required in connection with responses to the IB notice of irregularity must be paid directly to the IB even if the response is submitted through the USPTO §7.14(c)   3. Subsequent Designations The holder of an IR can submit a subsequent designation  through the USPTO §7.21  directly with the IB  if through the USPTO must be submitted through TEAS [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -5- 12/31/08 4. Recording Changes to IR  The IB records changes to IRs . §7.22  Requests to record are sent directly to the IB except   When assignee cannot obtain assignor’s signature for the request §7.23 When the request is to record a restriction of a holder’s right of disposal of an international registration or the release of such restriction §7.24 Inbound 1. Request for Extension of Protection (“REP”)to U.S.  Requires specific allegations in a verified statement by the international applicant including a declaration of a bona fide intention to use the mark in commerce in the U.S. §2.33(e)  IB will forward request to USPTO electronically. No direct request by applicant provided.  The filing date of an REP is the international registration date, if the request was made in the IR or the date the IB recorded the subsequent designation if the REP was made in a subsequent designation. §7.26  An REP is not eligible for registration on the Supplemental Register. §2.47; §2.75  Holder of the IR may claim priority under Article 4 of the Paris Convention if   The REP contains a claim of priority and The IR date or date of recordal of the subsequent designation at the IB is no later than 6 months after the filing date of the application that formed the basis of the claim of priority.§7.27  Color drawings will be accepted if color is claimed. No longer will black and white drawings be accepted that are “lined for color”. §2.52(b)(1) 2. Revival of Abandoned Applications  An applicant who files a petition to revive within two months of actual knowledge of the abandonment of the application and who did not receive a [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -6- 12/31/08 notice of abandonment of the application, must have been diligent in checking the status of the application every six months from the filing date of the application to the issuance of a registration. §2.146(i) 3. Petitions to Oppose  Can only be filed through ESTTA (“Electronic System for Trademark Trials and Appeals” §2.2) §2.101(b)(2). Petitions based on section 1 or 44 of the Act may still be filed on paper.  Must include fees to cover all named party opposers and all classes opposed.  A request to extend the time to file an opposition to an REP can be filed only through ESTTA. §2.102 (a)(2).  TTAB will no longer extend a potential opposer’s time to file an opposition beyond 180 days from the date the mark is published for opposition. §2.102(c). 4. Divided Registration  When ownership of a registration has changed with respect to some but not all of the goods and/or services, the registratn may file a request that the registration be divided into two or more separate registrations. §2.171(b). [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -7- 12/31/08 ABA AND AIPLA MEET THE TRADEMARK OFFICE 1. Welcome and Introduction  Jim Vana (Perkins Coie) - ABA  Keith Sharkin (King & Spalding LLP) - ABA  Jonathan Hudis (Oblon, Spivak, McClelland, Maier & Neustadt, P.C.) - AIPLA 9:00–9:15 a.m. 2. Madrid Protocol  Lynne Beresford - U.S. Patent and Trademark Office a. Overview of rules and procedures b. Issues and considerations c. Status of filings to date d. Q&A 9:15–10:30 a.m. Break 10:30–10:45 a.m. 3. Electronic Filing  Craig Morris - U.S. Patent and Trademark Office a. Filing mechanics b. Advantages c. Issues encountered by practitioners d. Q&A 10:45–12:00 p.m. Lunch: Keynote speaker — Commissioner for Trademarks Anne Chasser. 12:00–1:45 p.m. [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -8- 12/31/08 State of the Trademark Office 4. Prosecution Issues  Chris Doninger - U.S. Patent and Trademark Office (Law Office 105)  Michael Mason - King & Spalding LLP a. Practical tips b. Rule changes c. Issues encountered by practitioners d. Q&A 1:45–3:00 p.m. Break 3:00–3:15 p.m. 5. Practice Before the Trademark Trial and Appeal Board  Honorable David Sams - Chief Administrative Trademark Judge a. Recent cases b. Electronic filings c. Discovery/motion practice d. Q&A 3:15–4:30 p.m. Tour and Reception: U.S. Patent and Trademark Office - Alexandria campus Reception sponsored by King & Spalding LLP 5:00–6:30 p.m. [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -9- 12/31/08 VOTE TALLY In Favor (34) Denise Mazour Patricia Smart Joan Larkin Gregory Goonan Jeffrey Smith Patrick Phillips Thomas Brooke Marcia Auberger Edward Sokolski Jonathan Matkowski Kevin Smith Christine Daugherty Wayne Lovercheck Robert Manteuffel James Vana Jonathan Jennings Marnie Barnhorst Annette Heller Patrick Boland Erik Pelton Nicole Emmons Myra Kurzbard Marjory Basile Amy Wergeles Eileen King Martin Beran Abbas Mohajerian Harold Nissen John DuPre Julia Frey Keith Sharkin Joseph Marcus James Bikoff David Ellis Opposed (0) None Not Heard From (6) John Marsh Helen Minsker James Bell Frances Merritt Lara Holzman Almudena Arcelus Information Only (61) James Walsh Eric Siegel Henry Leeds Barbara Friedman Katerina Kopsidas Helen Winslow Sarah Knowlton Heather Dawson Eileen Gillis Ann Linnehan Gregory Zafiris Kimberly Mueller Kevin Daley Theodore Owers Christopher Larus Zachary Smolinski Georgina Challis Susan Mantooth Raymond Areaux Jennifer Cameron Kristina Vickstrom Timothy Boulette Inna Tsimerman Monica Mason Michael Stewart Lisa Rothstein Karen Burr Kevin Daley Lisa Cho Roland Plottel Colleen Butler Jennifer Day Ernest Sasso Alia Hawkins Andrew Price Eric Swirsky Adam Barea William LaFuze John Holman Judy Carey Frank Andorka John Shurtleff Ann Meuting Dorisann Wagner Glenn Gundersen Larisa Lacis Wonki Park Cherilyn Carlsen Stephen Wilson Benjamin Queen Dana Berce Serrano Neil Smith Kelly Pennick Jeffrey Samuels Richard Fladung Eric Wachspress Stephen Swift Douglas Masters Stephen Sturgeon Heather LaBrecque George Cooper [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -10- 12/31/08 [/26c02ef1-9b2c-450b-aa0a-17ad0a96c846.doc] -11- 12/31/08