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 second public meeting of the fiscal year on May 21, 2021. Please find below a summary and analysis of some key topics discussed during the recent TPAC meeting.
New and More Serious Penalties to Protect the Register
The Office plans to expand its efforts to address malfeasance by invoking the powers of the Director, involving Office of Enrollment and Discipline (OED) and working with law enforcement more often. The penalties available by these mechanisms reach far beyond merely refusing applications and canceling registrations. The Office is particularly focused on false claims of use in commerce, circumvention of the United States counsel rule, unauthorized practice of law by both foreign and United States entities, trafficking of applications and registrations and, as always, scam solicitations. The Office has reconsidered prior efforts that placed the onus on Examining Attorneys to conduct more thorough review of submissions, which proved inefficient because Examining Attorneys are unable to see larger trends in bad faith filings. Instead, the Office is planning to more broadly investigate schemes and bad actors. The Director may then issue a show cause order setting a deadline by which the offender must explain why it should not be sanctioned. Sanctions might include striking offending submissions entirely, terminating an applicable proceeding, precluding party from submitting documents in the future, terminating My.USPTO.gov accounts or referral of the matter to the OED. The OED, which enforces the Office’s rules of attorney ethics, can discipline attorneys directly by, for instance, excluding them from practice before the Office, or refer them to applicable state bars for further proceedings. Law enforcement could also be called upon to enforce the penalties against perjury included in declarations made to the Office. Practitioners should take these changes very seriously. Importantly, users of the Office’s online facilities may be held accountable violation of the Office’s online Terms of Use, in addition to other rules concerning practice before the Office.
Delays Resulting From the “Surge” of New Filings
The Office is taking affirmative steps to address the backlog of unexamined trademark applications that has accumulated since a surge of new filings in December 2020 and the 57% increase in new filings since as compared to the same period last year. As it stands, about 425,000 newly filed applications remain in inventory and average first action pendency is up to more than five months. In the short term, the Office has reallocated existing staff so focus on clearing these delays, but as a consequence, other Office functions are now also experiencing delays. For instance, the average pendency for action on responses to Office actions has jumped from fourteen to ninety-five days. Looking forward, the Office is working quickly to automate workflows that had previously been manual. An additional forty-seven new Examining Attorneys are also currently being trained to begin work. Although the impact of these attorneys may be diminished somewhat by attrition among their more senior colleagues, larger increases in staffing are anticipated in future budgets beyond 2021. In the meantime, the Office has launched a new Trademarks Dashboard so that customers can remain aware of any potential delays.
Efforts to Address Bad Faith in China
The Office’s Office of Policy and International Affairs has been working with the Chinese National Intellectual Property Administration (CNIPA) to address misconduct by Chinese trademark filers. In April 2021, the CNIPA launched a pilot program to address bad faith that will run through October 2021. As part of this program, the CNIPA will attempt to address preemptive trademark registrations made by third parties in China for the purpose of extorting the actual brand owner. It will do so by blocking assignments of these registrations if those assignments are made for a profit, in order to eliminate the incentive for engaging in misconduct. Additionally, the CNIPA intends to prohibit local governments from subsidizing trademark filings outside of China. Many have speculated that these subsidies may be driving the disproportionate number of Chinese filings that the Office is receiving by, in effect, placing a lucrative bounty on United States trademark registrations. It remains unclear how exactly the CNIPA is achieving either aim, but the Office will be monitoring the situation as the CNIPA evaluates its results between November and December 2021.
New United States Legislation to Address Counterfeiting
The USPTO Office of Governmental Affairs is monitoring several pieces of proposed legislation that are intended to address counterfeit goods being introduced from overseas, often through major online platforms. House Judiciary Chairman Jerold Nadler, along with a bipartisan group of fellow members of Congress, reintroduced a slightly amended version of the Stopping Harmful Offers on Platforms by Screening Against Fakes in E-commerce (SHOP SAFE) Act, which had been pending before the 116th Congress. This Act would create both secondary liability for online marketplaces through which counterfeits are sold and a safe harbor from that liability in the event that the marketplaces take certain steps to deter such misconduct. Meanwhile, Senators Cassidy and Durbin have reintroduced the Integrity, Notification, and Fairness in Online Retail Marketplaces for (INFORM) Consumers Act as an amendment to the U.S. Innovation and Competition Act. The amendment would require online marketplaces to collect and share certain information about third party sellers with consumers, to make counterfeiters more accountable, if not deter bad actors outright. Finally, Senator Grassley has introduced a bill allowing the Customs and Border Patrol to share information about seized articles suspected of violating intellectual property rights with the rights holders themselves.
New Form to Request Re-Designation of Board Decisions and Precedential
The Trademark Trial and Appeal Board is implementing a new procedure by which the public may request that previously published non-precedential Board decisions be re-designated as precedential. The Board has long informally considered unsolicited requests by email. The new anonymous form will standardize these procedures and will also request that submitters identify the most significant part of the decision in question. This anticipates another planned change in Board procedure by which it may begin issuing decisions that are precedential only in part. The Board only renders precedential decisions with the assent of a super-majority of its judges, so it may nevertheless be challenging to have decisions re-designated, but for practitioners that follow Board precedent closely, this could be an important opportunity to participate in shaping Board jurisprudence.
Implementation of the Trademark Modernization Act
As we have covered in our prior alerts, the Office is currently working to implement the Trademark Modernization Act, which was passed into law in December 2020. Practitioners are, in particular, encouraged to comment on the three possible “flexible” Office action response periods proposed the recent Notice of Proposed Rulemaking. The Office encourages interested parties to attend either of its scheduled roundtables on TMA, during which Office representatives will explain the proposed rules and take informal comments, which will be held on June 1 and June 14, 2021. Winterfeldt IP Group also plans to hold its own webinar to discuss the impact of the proposed rules and to consider possible issues on which to comment formally, and will be distributing the invitation shortly for this event.
Information Technology Updates
The Office has been successfully updating its information technology infrastructure at a rapid pace, thanks in part to the fees paid in connection with the surge in new filings. For the Office’s public facing facilities, it has changed its approach. Existing systems were allowed to atrophy in prior years while the Office anticipated an entirely new generation of services, but those never launched. The existing systems are now receiving necessary stabilization and critical upgrades. In particular, facilities are being developed to implement ID verification for Trademark Electronic Application System (TEAS) users. ID verification is also a step towards implementing “role based” access, by which only authorized users may make certain submissions relating to applications and registrations. Internally, the Office’s examination systems have been similarly stabilized while work has begun on their replacements. After two years, stabilization of the Trademark Trial and Appeals Board systems is complete and implementation of a new notice of opposition form and the new expungement ground for cancellation has begun. For the Office’s collaboration with the World Intellectual Property Office’s International Bureau, a cloud service has been established to support the development of updated microsystems. The Office’s data analytics have been modernized and streamlined. Updates are being made to the Trademark Electronic Search System (TESS) architecture and the underlying database is being migrated to the cloud. Significant updates are being made to automate additional systems, which is all the more critical due to the current delays in examination. The Office is working to ensure the stability of its systems, including augmenting its ability to scan TEAS filings for malware, implementing changes to the Office email systems to protect against phishing and supplementing disaster recovery redundancies for MyUSPTO with cloud backups. A new physical data center has been constructed in Manassas, Virginia, which should be fully configured by July 2021.
Document Authentication Delays
Although the Office successfully mitigated many of the effects of the COVID-19 pandemic with an efficient transition to remote work, there are still some lingering obstacles to overcome with respect to original documents that may be required for other agencies, trademark offices and tribunals. Efforts are being made within the Office itself to ensure that requests for original documents are promptly handled, but safety protocols must still be followed. The larger obstacle for many customers has come instead from the States Department, which is responsible for authenticating Office documents before they can be legalized or covered by apostille. The State Department continues to suffer a backlog and two- to three-month delays. Commissioner for Trademarks David Gooder offered his assurances that the Office was working to educate the State Department on the time sensitive nature of many Office documents. He hopes that some of these delays can be diminished for trademark owners.
Please feel free to reach out with any questions or comments about the work being done by the Trademark Public Advisory Committee. 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 meeting on July 30, 2021, as well as to keeping you apprised of other intellectual property developments.
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, brian@winterfeldt.law, +1 202 903 4422
David Rome, david@winterfeldt.law, +1 202 759 5833
