Trademark Updates from the USPTO

1. Trademark Updates from the USPTO Lynne G. Beresford Commissioner for Trademarks Colorado IP Section Colorado Bar Association November 2, 2010

2. Examination Statistics Filing, production, quality and other examination matters

3. Database Information • 1,619,182 live registered marks in the TESS. (10/26/10) • 5,483,376 records in the TESS. • 413,725 pending applications. • One year of the Official Gazette is now on the website. • TDR—1,601,660 complete. 22,694 to be completed. (live records)

4. -Publication and Issue Statistics • More than 50% of the marks being approved for publication have pendency of 6 months or less. • More than 5% of the marks being registered have pendency less than 7 months. • The process is getting faster and that trend is expected to continue.

5. Performance 2009/2010

6. Performance 2009/2010 ¹Actual results are within the target range considering the margin of error +/-.5%

7. Trademark Performance Measures2010 FY 2010 Trademark Performance Measures (Non-Examiner Statistics)

8. Madrid Statistics

9. Results of the Quality Study INTA and AIPLA • 188 actions reviewed. • 94.5% (93.8%) of all issues were correctly decided. • The average score given to Explanation of all issues was 4.2 (4.3)(out of 5). • The average score given to Evidence on the issues was 3.9 (3.8)(out of 5).

10. Results -- continued • 94.6% (96.2%) of all Office actions contained Sufficient Information to proceed. • In 49.2% (46.6%) of the cases reviewed a Phone Call would have been useful. • The average score given to the Overall Presentation of the Office Action was 4.1% (4.2%) on a5.0 scale.

11. New Quality Measure • Taking the results of the ongoing quality survey, Trademarks is piloting a new comprehensive excellence measure that, among other things, encourages more phone actions and looks at every aspect of correspondence from the examining attorney. • The new measure will be for the “comprehensive excellence” of the office action.

12. Excellent Office Action Initiative • Quality initiative to encourage examination excellence. • Continuing to develop criteria for “excellence” for particular issues. • Will address format, writing, search, appropriate use of form paragraphs and evidence. • Have received input from INTA, AIPLA and USPTO is seeking input from IPO, the DC Bar and NYIPLA.

13. Trademark Automation of the Future Trademarks has been directed to (1) separate systems from Patent systems (2) become virtual and (3) have a 21st century IT operation. Among other things we have sought comments from employees,TPAC, INTA, AIPLA, IPO, ACC and bar associations around the country on the functionality expected for 21st century USPTO web services.

14. Trademarks Next Generation IT Systems • More than 200 comments have been received from internal and external users of Trademark services and systems. • Trademarks is sorting the ideas to determine what can be done immediately and how to stage the remaining suggestions so that they can be implemented in a cost effective and orderly way.

15. Fraud after Bose • The CAFC rejected the “fraud “ test proposed in Medinol and asserted a much tougher test for fraud. • Deception must be willful. • There must be a deliberate attempt to mislead. • By equating “should have known” about the falsity with subjective intent, the TTAB lowered the fraud standard to simple negligence.

16. Bose--continued • Mere negligence is not fraud. • Intent to deceive is stricter than the standard for negligence or gross negligence—look to patent inequitable conduct. • Fraud means applicant or registrant knowingly makes a false, material representation with the intent to deceive the USPTO.

17. What’s the Register of the Future? • In re Bose Corp., 91 U.S.P.Q.2d 1938 (Fed. Cir. 2009) will have an effect on the practice of using very large descriptions of goods and services. • Will there be a change in the register? • Does it matter? • There was a seminar on this matter on April 26th at the USPTO—public comment was invited.

18. Bose Seminar – Some results • There was general agreement that ensuring accurate claims of goods and services in all applications was important for the future of the use-based register. • Among other things participants wondered if the U.S. still has a use-based system. • Should there be more scrutiny to specimens? • Should there be a simple post registration expungement proceeding?

19. Post Registration Rules • The Office will be proposing a change in the Post Registration rules to mirror the rules that apply to examination of specimens in applications. • Current rule states one specimen per class. Proposed rule change will allow post registration examiner to ask for additional specimens and information if examination of the section 8 warrants such a request.

20. Number of Classes per Registration by Year

21. 2009 Character Length Distribution

22. 2009 Registrations ID Character Length Distribution by Basis

23. Length of IDs for Registrations by Year where the Application was filed Sec. 1 (a)

24. Length of IDs in Registrations filed by section 66 (a) by Year

25. Length of Ids in Registrations filed with TEASPlus by Year

26. Question: How are the lengths of Ids in Registrations changing post registration? • USPTO scanned through the Updated Registration Certificates that have been created since 2003. • The years 2003 and 2010 are partial years. • Looking at the URCs, USPTO scanned for sets of asterisks (additions) and brackets (deletions). • Counting the length of text within these two sets of delimiters yields the length of additions and deletions. • Because of the methods employed, one of the delimiters was counted each time (but that was consistent). • There may, of course, be an addition and a deletion within the same record so what is counted is merely the length of each. • The “net” values provided are merely the deltas between the additions and deletions and not the net change in the ID. • The following are charts of the results.

27. Looking at the total number of characters added and deleted each year shows more and more text is being deleted than added

28. Percentage of All Registrations (regardless of basis) with ID Character Lengths by Year

29. However, the number of URCs per year is increasing so the total number of characters added/deleted each year doesn’t reflect a change pattern.

30. So, adjusting for the number of URCs the average change, as plotted by year, is reflected in the following chart.

31. Conclusions • It appears that: • Typically more text is deleted from a registration than is added. • The length of the deletions is increasing over time. • However, as the length of IDs is also increasing, there seems to be no actual increase given the relative size of the IDs.

32. Upcoming proposed rules • Office will be proposing: • A fee for filing any correspondence with the Office on paper. • Mandatory e-filing of post-publication amendments (due to time sensitive nature). • A limit on the number of §2.66 petitions per application. These proposed rules will appear on the USPTO web site and in the Federal Register.

33. Recent cases • In re Chippendales USA, Inc., __ F.3d ___, __ USPQ2d ____ Ser. No. 78666598 (Fed. Cir. Oct. 1, 2010) (The Court affirmed the Board’s decision refusing to register applicant’s trade dress consisting of the “cuffs and collar” costume (shown below) for “adult entertainment services, namely exotic dancing for women in the nature of live performances,” finding that the mark was not inherently distinctive. 

34. Recent Cases In re Sones, __ F.3d __, 93 USPQ2d 1118 (Fed. Cir. 2009) Federal Circuit held that a website specimen need not include a picture of the goods to qualify as a display associated with the goods under Lands’ End (citing Land’s End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992).  In a decision whose rationale seems applicable to catalog specimens as well, the Court noted that the test must focus on whether the mark is “associated” with the goods, and that a picture is not the only way to show such an association. 

35. Recent Cases In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (June 11, 2010) [precedential]. P.J. FITZPATRICK, INC. for various construction services, finding the mark not to be primarily a surname. The Board attempted to clarify prior case law by stating that "if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily a surname.

36. Recent Cases National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, Opposition No. 91166701 (June 11, 2010) [precedential].THE OTHER RED MEAT for "fresh and frozen salmon" held to be dilutive of the registered mark THE OTHER WHITE MEAT for "association services namely, promoting the interests of members of the pork industry." A "well-designed" telephone survey demonstrated an association between the marks, and played a crucial role in the Board's decision.

37. Recent Cases Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential]. In this case of first impression, the Board ruled that a foreign trademark owner who has filed an ITU application may rely on the fame of its mark in the United States to support a dilution claim in an opposition. In other words, although the TTAB does not recognize the "well known mark" or "famous foreign mark" doctrine as a basis for preventing registration by another, the fame of the foreign mark in this country may support a dilution claim, provided that the owner has filed an ITU application for the mark.

38. Thank You • Questions? • lynne.beresford@uspto.gov • www.uspto.gov