Pto Statistics For 2008

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 QUALITY Improve examination quality of Trademarks as indicated by the compliance rate determined through an 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 and the examiner’s approval or denial of the application[1]:

FY 2008 Results First Office Action: 95.8% Final Action: 97.2 %

E-GOV 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].

FY 2009 Targets

FY 2009 Qtr. 1 Results

FY 2009 Variance

First Office Action: 95.5% Final: 96%

First Office Action: 96.4% Final: 97.5%

+.94% +.52%

62%

60.2%

-2.9%

APPLICATION FILINGS – Classes Increase/Decrease from the prior year

401,392 1.8%

390,000 -2.8%

89,137 -10.7%

-2.2%

Examiner PRODUCTION Initial Exam First Actions Examiner Disposals – abandonments and approval for publication Examiner Balanced Disposals – first actions plus disposals

415,896 437,315 853,211

390,000 413,000 803,000

108,993 106,976 215,969

+18.2% +9.2% +13.5%

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%

430,343 274,250

358,100 226,000

101,570 60,232

+13.5% +6.6%

PENDENCY First action pendency from date of filing to first office action in months.

3.0

2.5 – 3.5

2.8

On target

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

13.9

16.0

14.3

-10.6%

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

11.8

13.5

12.0

-11.1%

$470

$632

$474

-25%

Office Disposals – abandonments and registrations Registrations

EFFICIENCY 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-athome 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: [email protected]

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? •  [email protected] •  www.uspto.gov