The Trademark Public Advisory Committee (TPAC), a small group of senior trademark industry professionals who advise the Director of the United States Patent and Trademark Office (USPTO) and the Commissioner for Trademarks, held its last public meeting of the fiscal year on October 30, 2020. Please find below a summary and analysis of key topics discussed during the recent TPAC meeting.
Swearing In of Tricia Thompkins
The TPAC meeting opened with the swearing in of Tricia Thompkins as the new interim member of TPAC, replacing Dinisa Folmar, who had sadly passed away earlier in 2020. Ms. Thompkins is the Executive Vice President, General Counsel, and Secretary at Perry Ellis International where she currently manages the company’s global legal operations in over 150 countries. She brings a wealth of trademark and IP experience to TPAC, as early in her career she worked as an Examining Attorney and Senior Supervisory Attorney at the USPTO, and she worked as a trademark attorney in various private practice and in-house roles before being elevated to her current role as General Counsel. Ms. Thompkins has served as the Chairperson of the International Trademark Association’s Digital Millennium Trademark Act Cross-Committee Task Force. Her interim appointment is effective as of October 30, 2020 and runs through December 1, 2022.
Departure of Elisabeth Escobar as TPAC Chair
Elisabeth Escobar will be stepping down as the TPAC Committee Chair. Members unanimously expressed their admiration and appreciation of the work Ms. Escobar did during her term as TPAC Chair, which spanned the COVID-19 pandemic period and all of the unique challenges faced by the trademark community and the USPTO during this time. A new Chair will be nominated at the beginning of 2021.
USPTO Operations Updates
Record Trademark Filing Trends. The Office reported 738,000 trademark filings in FY 2020, significantly surpassing TPAC’s projected number of 625,000. Despite worries regarding the impact the COVID-19 pandemic was going to have on trademark filings and the economy in general, the total number of filings for the whole of FY 2020 ended up being the single highest number of filings in the Office’s history. The third quarter of FY 2020 also set the record for the third highest number of filings in any quarter of the Office’s history. These numbers are very welcome news, reflecting an optimistic future for an American economy that has otherwise faced significant difficulties in 2020.
USPTO Examination Performance. Average first action pendency time remains squarely at 3 months, within the 2.5-3.5 month margin targeted, despite the record number of filings. First and final action compliance, which measures the quality of the USPTO’s performance, has also remained better than expected, suggesting that USPTO has not been hindered by the transition to remote work due to COVID-19 or the record increase in trademark filings made during the summer. The success of the Office in maintaining examination pendency times was in part due to the Office’s recruitment of over seventy new examining attorneys in order to manage the increased workload. The Office plans to recruit dozens more in the next few months.
New Examination Guide and Further Updates on the USPTO’s Treatment of gTLDs in Trademarks. The USPTO has issued its much anticipated Examination Guide detailing its interpretation of the Supreme Court’s decision in USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020). The Office has made minimal changes to its procedures in its new Examination Guide, explaining that “Booking.com rejected a per se rule that generic.com terms are automatically generic but did not otherwise significantly alter the genericness analysis to be applied to generic.com terms or the USPTO’s examination procedures regarding these terms.” Winterfeldt IP Group recently published a more detailed analysis of this new examination guide, which can be found here.
Budget and Spending. The total actual revenue the Office received surpassed the estimates offered by TPAC in its previous meeting. The Office received over $359 million in revenue, which surpassed the projected revenue estimates calculated during the previous quarter. This is mainly due to the increase in trademark fee collections that corresponded with the record number of filings the Office experienced during the last few months. The Office also managed to cut around $70 million in expenditures during the last quarter as it was expecting a drop in revenue at the end of the last quarter. This combination of increased revenues and lower expenditures resulted in the Office recuperating almost all of the losses it experienced during earlier in 2020. This is very positive news for the Office because deeper budget cuts may no longer be needed, and the Office may be able to continue to invest in the personnel it needs to process the record number of filings it received in the past few months within the target pendency times. However, the Office will continue to take a conservative approach to spending and projected revenues due to the economic uncertainty that still lingers in the global economy. The projected revenues for FY2021 were set at $362.5 million, which is essentially the same level received during FY2020 and which is still below the revenues forecasted at the beginning of the pandemic.
Continued Efforts to Address Clutter and Fraud
Misleading/Scam Solicitations. The USPTO continues to combat scam solicitations sent to trademark applicants and registrants. Even though it has limited legal authority to act against scam solicitations, its education and outreach efforts have been important for those agencies that are tasked with combating these fraudulent schemes. It has created resources on its website that list known solicitation scams, has warned filers about potential fraudulent solicitations and maintains a dedicated mailbox where the public can report solicitation directly: TMScams@uspto.gov.
Continuing Impact of the United States Counsel Requirement. Commissioner Gooder reported that the implementation of the United States counsel requirement rule continues to produce positive results. The US counsel requirement has contributed in a 2.1% reduction in specimen refusals, meaning that fewer altered, fake or otherwise inappropriate specimens are being submitted. Furthermore, Commissioner Gooder has also been receiving extensive feedback from various trademark owners and legal practitioners saying that they are experiencing many fewer oppositions to their trademark applications since the rule was implemented. Though further study still needs to be conducted, this feedback suggests that trademark owners are facing fewer frivolous oppositions from trademark applicants that are either fraudulently maintaining their registrations or are being ill-advised on US trademark law by counsel outside the United States.
Commissioner Gooder nonetheless reiterated his concerns about the misconduct that has arisen in response to the requirement. The Office continues to combat a new tactic adopted by foreign-domiciled filers whereby they acquire and use contact information from mail forwarding services located in the United States, which they misrepresent to be their domicile, because United States applicants are not required to have domestic counsel. There also continue to be problems with foreign-domiciled filers that use the names of attorneys with whom they have no relationship or that are entirely fictitious. The task force will continue reviewing weekly data analytics reports to identify suspicious surges in foreign representation. It will also receive information from examining attorneys regarding suspicious applications. Meanwhile, attorney trademark practitioners should regularly monitor trademark records for uses of their own credentials to which they have not consented.
Proof-of-Use Audit Program. The Office’s Proof-of-Use Audit program has made inroads against the surfeit of “dead wood” registrations for marks that are not in use, but maintained in arguably bad faith. The program has resulted in the deletion of over 7,000 categories of goods and services and the cancellation of over 950 registrations since its implementation.
The program randomly audits registrations by requesting registrants to submit proof of ongoing use of the mark in connection with the goods listed in their trademark registrations. It is meant to deter trademark owners from seeking overly broad protection for their marks, as overly broad protection could prevent new applicants who can show suitable use with a similar mark from securing registration and prevent “congestion” at the Office which could ultimately impair commerce.
TTAB Filing Trends. The number of appeals, and petitions to cancel have increased between 3.1% and 4.6% percent while opposition filings have gone down compared to FY2019. FY2020 in total saw a decrease in the number of cases ready for decision, suggesting a somewhat diminished workload for TTAB officials. That the number of cases maintained its decline throughout the end of FY2020 supports the theory that the significant increase in TTAB filings at the end of FY2019 was just an anomaly.
TTAB Performance for FY 2020. The average pendency time for resolving contested motions for FY2020 finished at 12.4 weeks, which is slightly above the Board’s target pendency average of 8-12 weeks. The slight increase in pendency times was primarily due to the Board’s effort to review its inventory of cases for any un-docketed motions. This effort did reveal a considerable number of motions that were in the Board’s inventory but were not being tracked.
The pendency time from the date a case is ready for a decision to the issuance of a final decision by the Board was 11.7 weeks for ex parte appeals, which is within the Board’s target pendency range of 10-12 weeks. However, the pendency time from the date a case is ready for a decision to the issuance of a final decision in trial cases is 17.7 weeks, which is above the Board’s target range of 12-15 weeks. In general, the total pendency time for the resolution of a TTAB case from the moment it is filed to the final decision is 44.7 weeks through FY2020, representing an increase of 10.4% from last year. However, Chief Judge Rogers notes that this average total pendency time will probably go down given the lighter caseload the Board has moving into FY2021.
TTAB IT Updates. The Board launched a Reading Room that replaced the e-FOIA webpage on August 1, 2020, improving the ability to search TTAB precedents and final decisions. The Board has received very positive feedback from various stakeholders, but continues to urge the public to provide feedback regarding any technical difficulties related to this new feature via TTABFeedback@uspto.gov.
Policy & International Affairs Update
New Rules Prompted Due to the COVID-19 Pandemic. The WIPO Madrid Working Group reported that the World Intellectual Property Organization (WIPO) will be implementing a new rule requiring trademark owners to provide an email address when filing applications under the Madrid Protocol. The rule comes after some negative experiences WIPO had with being unable to communicate with applicants or registrants in countries whose trademark offices were shut down due to the COVID-19 pandemic.
Furthermore, WIPO will also be implementing a new rule that will allow the acceptance of filings missed or delayed due to force majeure events. This comes after WIPO’s struggle with claims raised by applicants and registrants who were unable to make timely filings due to the COVID-19 pandemic but found no clear recourse in WIPO’s rules.
Chinese Trademarks on TMview. Chinese trademark registrations and applications will be available on the TMview system in the coming months, according to the WIPO Madrid Working Group. TMview is an online consultation tool allowing any Internet user to search, free of charge, the trademarks of all trademark offices involved in the initiative.
State Sovereignty Immunity after Allen v. Cooper. Various member of Congress sent a letter to the USPTO requesting that it study the impact the Supreme Court’s decision in Allen v. Cooper – which held that Congress lacked the authority to revoke states’ sovereign immunity against copyright infringement – is having on patent or trademark owners who are experiencing infringement by state entities without adequate remedies under state law. The Office will be issuing a Federal Register Notice seeking feedback and relevant evidence from external stakeholders, including the states, IP owners, and others in the coming weeks. The Study is due no later than April 30, 2021.
Trademark Modernization Act of 2020 (H.R. 6196/S.3449). The Trademark Modernization Act passed in the House of Representatives Subcommittee on Courts, Intellectual Property, and the Internet with some notable amendments. First, the Subcommittee introduced language intended to prevent a challenge to the authority of the Trademark Trial and Appeal Board based on arguments analogous to those accepted by the Federal Circuit Court of Appeals in its recent Arthrex v. Smith & Nephew Inc. decision. This merely recognizes the Director’s authority to set aside or modify Board decisions, which has already long been the Board’s practice. Second, the Subcommittee introduced a limitation on expungement proceedings requiring that they be brought within ten years of registration. Although this cuts against the purpose of the proceeding, which allows for expedited cancellation of registrations for marks that have never been used with identified goods, it would insulate more established brand owners from possible attack immediately following passage of the Act and it would likely diminish much of the recordkeeping burden that the Act would create. It remains to be seen whether the Senate’s Subcommittee on Intellectual Property will make corresponding or additional amendments. Overall, there may still be minor revisions once the bill is brought to the floor and there are some studies being conducted as to how much funds should be appropriated to implement the Act. Still, it enjoys broad, bipartisan support.
We hope that this overview provides you with timely insight into important developments within the trademark community in the United States. Please feel free to reach out with any questions or comments about the work being done by the Trademark Public Advisory Committee, and we would be pleased to share your feedback with the United States Patent and Trademark Office. If any of the above topics are of interest and you would like more information, we would be delighted to hear from you. Otherwise, we look forward to sharing updates from the next TPAC meetings, which will be scheduled and announced in early 2021, as well as to keeping you apprised of other intellectual property developments. Please also be on the lookout for our analysis of the 2020 TPAC Annual Report, which was issued recently.
For further information regarding the content of this article, or to discuss this or other intellectual property matters, please contact any of the following Winterfeldt IP Group team members:
Brian Winterfeldt, firstname.lastname@example.org, +1 202 903 4422
David Rome, email@example.com, +1 202 759 5833