Meryl Hershkowitz

Trademark Group Director

March 10, 2009
 Trademark Updates

•  Statistics
•  What’s New in
Policy and
Procedure
•  Latest TTAB Cases
and Pending Cases
at the Federal
Circuit
•  Petition Practice in
light of Medinol
Examination Statistics

Filing, production, quality and other

examination matters
 FY 2008 – 2009 Performance
FY 2009 – Trademark Performance Measures – Quarter 1 FY 2008 FY 2009 FY 2009 FY 2009
Results Targets Qtr. 1 Results Variance

QUALITY First Office Action: First Office Action: First Office Action: +.94%
Improve examination quality of Trademarks as indicated by the compliance rate determined through an 95.8% 95.5% 96.4% +.52%
in-process review evaluation of the statutory bases for which the Office raises issues and or refuses Final Action: Final: Final:
marks for registration based on the first office action and the examiner’s approval or denial of the 97.2 % 96% 97.5%
application[1]:

E-GOV 62% 60.2% -2.9%

Increase the use of electronic filing and processing as measured by the percent of applications for the
registration of a trademark that are processed electronically[2].

APPLICATION FILINGS – Classes 401,392 390,000 89,137 -2.2%

Increase/Decrease from the prior year 1.8% -2.8% -10.7%

Examiner PRODUCTION 415,896 390,000 108,993 +18.2%

Initial Exam First Actions 437,315 413,000 106,976 +9.2%
Examiner Disposals – abandonments and approval for publication 853,211 803,000 215,969 +13.5%
Examiner Balanced Disposals – first actions plus disposals

Examiner FTE 382.2 380 98.95 4.2%

Productivity – Balanced Disposals per Examiner FTE 2,232 2,113 2,183 +2.3%

Productivity – Balanced Disposals per Examiner FTE including comp/credit hours 2,192 2,058 2,166 +5.2%

Office Disposals – abandonments and registrations 430,343 358,100 101,570 +13.5%

Registrations 274,250 226,000 60,232 +6.6%

PENDENCY
3.0 2.5 – 3.5 2.8 On target
First action pendency from date of filing to first office action in months.

PENDENCY
Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonment 13.9 16.0 14.3 -10.6%
– including suspended and inter partes proceedings.

PENDENCY
Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonment 11.8 13.5 12.0 -11.1%
– excluding suspended and inter partes proceedings.

EFFICIENCY $470 $632 $474 -25%

Improve the efficiency of the trademark process as measured by the average cost of a trademark disposal
compared to trademark direct and indirect costs. Actual results are based on total trademark related
expenditures compared to office disposals.
 Quality
•  Goal: Improve examination quality as
measured by compliance rates
–  The compliance rate is measure of the percent of
actions that have been determined to have no
deficiencies or errors
•  2008 Results
–  First Action Compliance: 95.8%
–  Final Action Compliance: 97.2%
We will be changing the universe of files considered
for our final action compliance rate this year.
 Quality
Quality of Trademark Examination – FY 2009 Compliance Rate
 Pendency - 2009

•  Target for first action pendency is between 2.5 and 3.5 months

•  First action pendency at the end of fiscal year was 3.0 months

•  Disposal pendency was 11.8 months for applications without

inter partes or suspensions and 13.9 months for applications
including suspended and inter partes cases at end of FY08

•  In FY09 the target for first action pendency will be 2.5 – 3.5
months and the target for disposal pendency will be to keep the
pendency for cases that include inter partes and suspended
cases will be 13 months
 First Action Pendency
FY08 monthly pendency distribution – months from filing to first office action
 E-Government

Goal: Increase the percentage of applications

filed electronically
•  FY ’07 95.4% of applications filed via TEAS
•  FY ’08 Target: 95%
•  FY ’08 results: 96.9%
•  2009 electronic measure - percent of
disposals that are handled by electronic filing
and processing (currently 51%)
E-government

Disposal pendency by types of filings – FY 2008:

First Action Approvals for Pub
 Application Filings

•  394,368 application classes were filed in FY ’07 –

an 11.2% increase over FY ’06
•  401,392 applications filed in FY08 – a 1.8%
increase over FY ‘07
•  Application filings expected in FY09
–  363,000 classes
–  -10.0% compared to FY08
 Historical Application Filing

Applications have increased at about 7% per year for the past 10 years.
Filing Levels/Historic Events
 Examining Attorney Production

•  Based on “balanced disposals” (1st actions,

approvals, abandonments).
•  Target is number of BDs we estimate to be
necessary to maintain first action pendency
between 2.5 and 3.5 months
•  FY 2007 BDs: 900,808
•  FY 08 BD’s : 853,211
•  FY 09 target: 772,000
–  Declining numbers represent lower filings and a
smaller staff—but maintaining 3 month pendency
 Examining Attorney Staffing

•  FY 2007 401 FTE (Full Time Equivalent)

Examining Attorneys
•  FY 08 examining attorney FTE was 382.2
•  FY 09 examining attorney FTE target is 380.
 Telework

•  The USPTO Trademark telework program has been

recognized as a success throughout the federal
government.
•  The Agency celebrated the 10th anniversary of this
program in 2007
•  85% of eligible trademark examining attorneys now
work from home nearly full time
•  52% of all Trademark employees work from home at
least part of their work week.
•  In 2008, the Trademark Assistance Center was
recognized with the Tele-Vision award as the first
federal call center with a very successful work-at-
home program
 2009 Challenges

•  Managing in the turbulent economy

•  Organizational Assessments
–  Streamline processes
–  Increase efficiency
–  Eliminate unnecessary steps
•  Improve Quality
•  New form paragraph system
•  Training and guidelines
•  “excellent first action” process
•  Expand electronic workflow
 -Publication and Issue Statistics

•  More than 50% of the marks being approved

for publication have 6 month or less
pendency
•  More than 5% of the marks being registered
have less than 7 month pendency
•  Paris Convention issues?
•  The process is getting faster and that trend is
expected to continue
 Database Information

•  1,525,871 registered marks in TESS (2/18)

•  5,046,610 application records in the TESS
•  449,644 pending applications
•  One year of the Official Gazette is now on the
website
•  TDR—scanning is almost complete!
–  Less than 15,000 registration files have not been
scanned into TDR
 E-registration

•  Proposal to eliminate automatic issuance of a

paper registration certificate
•  USPTO will send a “your registration has
issued” notice
•  Option to purchase a simple paper copy
•  Option to purchase a certified status and title
record
•  On hold “technical difficulties”
Proposed Format - Revised Certificate
Proposed Format - Revised Certificate
Proposed Format - Revised Certificate
Proposed Format - Revised Certificate
 Letters of Protest

•  New standard if LOP filed before publication

in Official Gazette (Exam Guide 4-08)
•  Office will grant LOP filed before publication
in all cases where the evidence is relevant
and supports any reasonable ground for
refusal in ex parte examination
•  Examining Attorney required to consider
evidence, but not required to issue refusal
•  No change in standard after publication:
clear error
 Consistency Initiative

•  The Office now allows applicants to request

review of certain inconsistencies in
examination through a new e-mail box:
TMconsistency@uspto.gov
 Requirements

•  The applicant believes the USPTO acted

inconsistently regarding two or more
applications, all of which were filed by the
applicant making the request;
•  Any registration involved was issued less
than one year before the request;
•  At least one of the applications involved has
not yet been published; and
•  The alleged inconsistent treatment has
already occurred
 Consistency Initiative (cont.)

•  The Office will not respond directly to the

applicant, but will take corrective action if
appropriate
•  Identification or classification requirements
cannot be the subject of the request
•  Applicants are encouraged to first contact the
examining attorney to address the
inconsistency issue
•  Request does not stay the response period
and is not a basis for suspension of the
application or appeal
 Tagging Official Correspondence

•  Each of the pre-written paragraphs (“form

paragraphs”) used to compose official
examination correspondence are now
electronically “tagged”
•  Tagging will allow data collection regarding:
–  Frequency of issuing specific refusals and
requirements
–  Identification of examination issues where
additional training would improve quality
 C.F.R. Rules

•  All pending rules are temporarily on hold—

even the non-controversial signature rules
•  Miscellaneous rules changes were effective
January 16, 2009
–  Summary on USPTO website
 Miscellaneous Rules Changes

•  Section 44 and §66(a) applications not

subject to concurrent use. Rules 2.73 and
2.99(g)
•  Applicants may not reinsert goods or services
omitted from a paper SOU. Rule 2.88(i)(2)
•  Post Registration - Conforming amendments
to disclaimer, description of the mark, or
miscellaneous statement may be required
when an owner files a request to amend a
registration under §7. Rules 2.173(f) and (g)
 Recent TTAB Cases

Section 2(a)
•  In re Heeb Media, LLC, 89 USPQ2d 1071 (TTAB
2008
Descriptiveness - Section 2(e)(1)
•  In re Leonhardt, ___ USPQ2d ___, Serial No.
78666879 (TTAB November 13, 2008)
•  In re BetaBatt, Inc., 89 USPQ2d 1152 (TTAB 2008)
Ownership of Marks – Implied License
•  Ballet Tech Foundation, Inc. v. The Joyce Theater
Foundation, Inc., ____ USPQ2d ____ Oppos. No.
91180789, Canc. No. 92042019 (TTAB December
11, 2008)
 Pending Federal Circuit Appeals

•  MOSKOVSAYA §§ 2(a) and 2(e)(3) case 74-382759

•  BOSE fraud case….91-157315
•  COCAINE §2(a) scandalous case (77-062212)
•  SHINNECOCK §2a false connection cases
(78-918061 and 78-918500)
•  ONE NATION UNDER GOD website specimen case
(78-717427)
•  IN RE ELECTRO BAND §2d likelihood of confusion
(77-038241)
 Medinol updates

•  BOSE fraud case….91-157315

–  At the CAFC
–  Office requested to be substituted for the opposer
–  Issue is Bose’s claim of use of the mark on audio
cassette players and tape recorders in its affidavit
of continued use
•  G&W Laboratories, Inc v. G W Pharma
Limited 01/29/09 pro#91169571
 Petitions to the Director

•  Applicants, registrants, and parties to inter partes

proceedings before the TTAB
–  who believe they have been injured by certain adverse
actions of the USPTO, or
–  who believe that they cannot comply with the requirements
of the Trademark Rules of Practice (37 C.F.R. Part 2)
because of an extraordinary situation
may seek equitable relief by filing a petition under 37
C.F.R. §2.146.
 Medinol and Petitions to the
Director

Since Medinol and more recent TTAB cases on fraud, there has
been a steady increase in requests from outside attorneys to:

  Withdraw “inadvertently” filed documents and/or rescind prior

acceptance or acknowledgement of Section 8 affidavits of
continued use and Section 15 affidavits of incontestability

  Submit “clarifying” information or make information “of record”

  Amend the basis of an application from §1(a) to §1(b) post

publication
 Requests to Withdraw/Rescind

•  We instruct customers that requests to

withdraw/rescind are only handled on petition
•  $100 petition fee is required
•  Generally, we do not remove any documents
from Office records (duty to preserve
integrity). We may remove or redact
confidential information not relied on during
examination.
•  We generally agree not to examine a
previously–filed document.
 Requests to Withdraw/Rescind

•  We have refused to rescind prior acceptance of a

Section 8 affidavit or grant of Section 9 renewal
application
•  Registrant may submit “corrective” filings (these are
not examined), delete certain goods/services from the
registration or surrender the registration
•  We have agreed to update Office records to
“abandon” a Section 15 affidavit of incontestability
even after acknowledgement by the Office
(discretionary filing)
•  No refund of associated filing fee
 “Of Record” Requests

•  Cases where registrant wants to submit

“clarifying” information, and no action by
Office required
•  Not filed as Section 7 correction request
•  Submit information via facsimile to Post Reg
Division identifying the submission as a
request to make information of record
 Petitions to Amend Basis

•  Post publication amendments to basis only

considered after a petition to the Director is granted
•  Petitions granted when it is too late to withdraw
application from publication and all of the goods are
amended from §1(a) to 1(b) or a request to divide is
filed
•  $100 petition fee
•  Application returned to examination to consider
amendment
 Petitions

If an applicant or attorney requests removal of a

document or information from the Official
record
–  Petition required in most cases
–  Direct them to the staff attorney on duty in the
Petitions Office (571) 272-8950
 Thank You

•  Questions?
•  Meryl.hershkowitz@uspto.gov
•  www.uspto.gov