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USPTO Trademark Public Advisory Committee Public Meeting Agenda USPTO Headquarters Madison South Auditorium 600 Dulany Street Alexandria, VA 22314 Friday, May 5, 2017 9:00 a.m. to 11:30 a.m. 9:00 am, —9:10 a.m. (10 minutes) Introduction and Weleome (Chairperson Dee Ann ‘Weldon-Wilson) 9:10 am. — 9:20 a.m, (10 minutes) Legislative Update (Director, Office of Governmental Affairs Dana Colarulli) 49:20 am, - 9:30 am. (10 minutes) — Policy and International Update (Chief Policy Officer and Director for International Affairs Shira Perlmutter) 9:30 am. - 10:00 a.m. - (30 minutes) Trademark Operations Update (Commissioner for Trademarks Mary Boney Denison) 10:00 am, — 10:15 am, (15 minutes) OCFO Update (Frank Murphy, Acting Chief Financial Officer) 10 minute break 10:25 am. — 10:50 a.m. (25 minutes) TTAB Update (Chief Administrative Judge Gerard Rogers) 10:50 am, — 11:15 a.m, (25 minutes) ~ OCIO Update (CI John Owens! ‘TMNG Portfolio Manager John Cyrus) f Information Officer 11:15 a.m. — 11:30 a.m, (15 minutes) ~ Public Comments: ‘Adjourn public meeting Next Meeting: Friday, July 28, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE Dee Ann Weldon-Wilson a Chairperson, Trademark Public Advisory Committee e ative/Governmental s Update BRTENT AKDT Rane MARK OFFICE Dana Robert Colar Director, Office of Governmental Affairs — Congressional Activity — Legislation 115th Congress (first session) No Stolen Trademarks Honored in America Act (S. 259/H.R. 1450) + Re-introduced by Sen. Nelson (D-FL) and Sen. Rubio (R-FL) in the Senate on February 1, 2017 + An identical bill was introduced by Congressman Issa (R-CA) on March 9, 2017 * Bills are similar to those introduced in the previous Congress (S. 757 (114th) and H.R. 1627 (114*) + Amends the Department of Commerce and Related Agencies Appropriations Act, 1999 to prohibit U.S. courts from recognizing, enforcing, or otherwise validating any assertion of rights by an individual (under current law, by a designated Cuban national) of a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated by the Cuban government unless the original owner of such mark or name, or such owner's bona fide successor, has expressly consented. + Referred respectively to the Senate Judiciary Committee and the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet “i ea Congressional Activity - Legislation 115th Congress (first session) H.R. 1695, Register of Copyrights Selection and Accountability Act, + Introduced by Reps. Goodlatte and Conyers on March 23, 2017 + Would make the Register of Copyrights a presidentially-appointed, Senate-confirmed position, limits the position to a 10-year term, and requires that the 2egister be capable of identifying and supervising a Chief Information Officer or similar official responsible for managing information technology systems. + Passed by the House on April 26, 2017. S._, Register of Copyrights Selection and Accountabi 7 + Introduced by Sens. Grassley, Feinstein, Leahy and Hatch on May 2, 2017 + Identical to H.R.1695 + (Expected to be) Referred to Senate Rules Committee nn Congressional Activity - Hearing 115th Congress (first session) Senate Judiciary Committee Hearing: “Intellectual Property — Driver of Innovation: Making our Lives Healthier, Safer, and More Productive” (April 25, 2017) The hearing explored how the U.S. IP system is supporting innovation and, in the process, helping to save lives, feed the world, and change the way we interact with technology. + Witnesses: o Mr. Matthew C. Allen, Acting Assistant Director for the Intellectual Property Rights Center ** © Ms Kary Eron, General Manager Health and Live Science, Data Center Group © Dr. Ashifi Gogo, Ph.D., CEO, Sproxil, Inc. (P4H Award winner - 2013) © Dr. Conor F. Madigan, Ph.D., Co-Founder, CEO and President of Kateeva, Inc. ° Dr. Neal Gutterson, Ph.D,, Vice President, Research & Development, DuPont Pioneer Hi-Bred International, Inc. (P4H Award winner — 2013) ** Of particular interest: Mr. Allen testified extensively on the changing nature of the sale of counterfeit goods; Described the challenges of intercepting goods a single package at a time a Pending Executive Appointments 115th Congress (first session) Office of the Intellectual Property Enforcement Coordinator + President Trump nominated Vishal J. Amin * Current role: Senior Counsel for House Judiciary Committee Chairman Bob Goodlatte (R-VA) — Congressional Events 115th Congress (first session) World IP Day (April 26, 2017) - Senate Hart Office Building, Room 902 USPTO partnered with the World Intellectual Property Organization, the American Intellectual Property Law Association, the International Trademark Association, and the Global Intellectual Property Center of the U.S. Chamber of Commerce to celebrate World IP Day. 0 Local events held in Alexandria and on Capitol Hill © Capitol Hill Event included remarks from Judiciary Leaders and the Co-Chairs of the Congressional Trademark Caucus: Chairman Goodlatte (R-VA) Congressman Collins (R- GA) Congressman Radcliffe (R-TX) Congressman Issa (R-CA) Senator Coons (D-DE) © Speakers included Deputy Director General John Sandage, INTA President Joseph Ferretti, Chief IP Officer of Nike, Jeanine Hayes, and co-founder of GRIT (a 2015 Patents for Humanity winner) Mario Bollini | Increase Readability of Declaration >Continue Random Audits of Registrations > Expungement Procedures SL CER ROE eee Increased Readability of Declaration Text Former Declaration Format Revised Declaration Format Ts croc sg the epi, ere yaaa chractes (etterwnubers) of yor coming, preceded ond | seen tpn wey dene eer dy ro Hore eager rte cbr health itnet Di incst belspete eerhareanincn acct Cone | [karat antnpan tas pease tncrateneettesswat ence ease te cpap he tn de i 3) tere eae one DECLARATION aOR te srt ble at een ig te ein me BUS 6a epletntecmnectte |. |SleSbnmenalnps Matmcnlnhlie ‘anatase npereé bean e feat nememee rt etentaremrbe dieses fe sont eae} faa dena hcaecos hiner 9 {i peg ahem ‘Slain were eae es nape ee 185 SD 5 ae ae bea Senfceneion ea oes nue ft ensues oe herein hf oe es Tt eae epee nnd pt ay bir De ee! te roy vet! he pre se feel ot et ‘telecoms placer ‘te tergtic wate nt cone, etw ne deren nnn Dela en no hoa netacnemae St para eam vit Re gssseias he so mene ener min et Te fly ay rere es Saaremaa tn tamaz haemo enee Huse lh ~ ‘Seva toon be a ut escarole i ne ears ‘Seca et errs at thier noe a aed mae al oe eee —— bene Ieper te plaiatlvaceniomee a cs i ee eee s SS 1 ileal etannelig Saentniaecaeainanatlahatietciooninaainies | = Sacer | cia ti tren ea ‘kjpmy deseo be Cl i ic i oye ey dt ‘Rca renner meen dns onnnwesdmnseiieiadmianotoe 32 Random Audits * USPTO will require submission of information, exhibits, affidavits or declarations, and such additional specimens to ensure that register accurately reflects marks are in use in United States for all goods/services identified in registrations in random pull of cases. * New Rule in effect on March 21, 2017, not February 17 as originally published. * Rollout expected later this year. 33 Expedited Cancellation Proceedings * Meeting with user groups to get feedback on possible expungement procedures * Four options initially considered; we are moving forward on two options that do not require a statutory change * TTAB Streamlined Cancellation Proceedings — 1) Abandonment — 2) No use as of §1(a) filing date or no use as of the filing date of an AAU/SOU for §1(b) 34 eee Fraudulent Solicitations * Raising awareness of schemes to defraud trademark owners: — Each office action email notification includes a link to our Non- USPTO Solicitations page — filing receipts now contain warning — With each registration, we mail a bright orange paper with the same information — Video on our webpage: https://www.uspto.gov/trademarks- getting-started/non-uspto-solicitations — We also have an updated list of fraudulent entities we have identified eee’ Qe Two men recently pled guilty to stealing $1.66 million from U.S. ener trademark applicants and registrants; a third man was convicted of money laundering and false bank entry in connection with etait laundering the proceeds of a trademark scam es ‘“p|- Holding joint TPAC/USPTO public roundtable on July 26 2S R\ ; “Adis — Possible agencies joining us at roundtable: FTC, CBP, USPIS, SBA, Ww ra J 35: n-ne * Comprised of the 5 largest trademark offices: — European Union Intellectual Property Office (EUIPO), QnA | Japan Patent Office (JPO), — Korean Intellectual Property Office (KIPO), — Trademark Office of the State Administration of Industry and Commerce of the People’s Republic of China (SAIC), and — United States Patent and Trademark Office (USPTO) Focuses on exchange of information and collaboration and harmonization projects regarding trademark matters to benefit users * Projects include, among others: — Minimizing Bad Faith Filings — Common Status Descriptors — ID List 37 TM5 on Bad Faith TM Filings ¢ TM5 partners — USPTO, SAIC, EUIPO, JPO, and KIPO — continue to make efforts to minimize bad faith ~ & ptm I trademark filings by: ae (a) exchanging best practices and (b) working with each other to provide more transparent information to users on how the largest trademark offices combat bad faith trademark filings. ° Most recent seminars: Tokyo, March 2016 and Kunshan City, October 2016 Bad Faith Seminar at the mid-year meeting in Barcelona in May. INTA Registrants are welcome to attend. Meeting will take place on May 21 at 11 AM 38 ~via aN ees Common Status Descriptors So) + an I POPVOX | ©@2@® Mak iafrmation cn 1 Goad tndSerdoes + Basis infomation Case Level + Current ners) Information + RtoreyCoreependence information Prosecution History Stat and Loca evoration jnmant Abeta OF Tie Infernal Clk to Load Proceedings Cet to Loed 39 eee Outreach Public outreach to small businesses and entrepreneurs regarding importance of Trademarks through 1) speaking engagements and 2) recorded instructional videos “Basic Facts” video over 687,000 views as of April 26, 2017 Since the outreach program began in February 2012, at least one live program has been presented in all 50 states. Recent and Upcoming events include: - April 27, 2017: LA Times Multicultural Business Forum; Los Angeles, c — May 16, 2017: University of Pittsburgh Inst. for Entrepreneurial Excellence; Pittsburgh, PA - May 18, 2017: Starting the Patent and Trademark Process; Lincoln, — June 1, 2017: Rocky Mountain Intellectual Property & Technology Institute, Denver CO - June 7, 2017: University of Virginia; Charlottesville, VA - June 22-27, 2017: American Library Association Conference; Chicago, IL 40 Thank You! Mary Boney Denison Commissioner for Trademarks Mary.Denison@uspto.gov 41 urten stares BATENT ANG TRADEMARK OFFICE Frank Murphy ® Chief Financial Officer ee Agenda — FY 2017 Status — FY 2018 Budget — FY 2019 Budget — Fee Review a FY 2017 Status ¢ FY 2017 Appropriation Status * The federal hiring freeze ended on April 12, 2017 — USPTO is evaluating hiring needs in conjunction with our long term strategic plans 5 atic unelad a buh 4 fecce, buf oon want fr panko Sere wee Tones proton ry Lennf c le ee FY 2017 Status — Fees * Trademark’s planned fee estimate is $306.2M Total Trademark Collections (Dollars in Thousands) Fy2015_ | FY 2016 Actual Actual__—_Increase Plan Increase $271,963 $277,5/9 2.1% $306,224 = 10.3% Total Trademark Fee Collections (SMitins) * Collections through March 31* are currently 4.9% above the corresponding FY 2016 timeframe Year-To-Date Comparison (Dollars in Thousands) ‘Actual Increase Actual SD $138,933 2.8% $145,728 49% ee SSF & heeds FY 2015 Actuals —FY 2016 Actuals —FY 2017 Actuals Te FY 2017 Status — Projected Results Projected End-of-Year Funding as of March 31, 2017 Tradem: Projected Income Summary z 3 Actual Fee Collections - End-of-Year $306,224,355 Actual Prior Year Carryover 106,998,905 Other Income - Current Apportionment 5,364,561 Total Projected Income 418,587,821 Projected Spending PUAID ECR “Gt é Actual Commitments and Obligations 179,130,548 Projected Spending for Remainder of Year 133,244,586 Total Projected Spending 312,375,134 Total Projected Operating Reserve $106,212,687 0 OS SS i a a a FY 2018 Budget * TPAC, DoC, and OMB received the budget for final review in April * USPTO anticipates the FY 2018 President's budget will be released in mid to late May 2017 A) as FY 2019 Budget * USPTO expects to receive guidance on formulating the FY 2019 OMB submission in the May/June timeframe — The current plan is to submit the FY 2019 Budget to OMB for initial review in September 2017 * TPAC will be provided a summary of this information to review Cn Fee Review * USPTO started its biennial fee review in January 2017 as required by Chief Financial Officers (CFO) Act of 1990 (Public Law 101 576) — The review is intended to result in a consistent, effective, timely, and expeditious review of the existing fee schedule as well as research, analysis, and recommendations for potential revisions and additions to that schedule * Absent Congressional action, the USPTO’s fee setting authority under section 10 of the AIA will expire on September 16, 2018 64 Te Questions and Comments Frank Murphy Acting, Chief Financial Officer (571) 272-9200 Frank.Murphy@USPTO.GOV Break We will return to the session in 10 minutes. Thank you. Gerard F. Rogers 7 Chief Administrative Trademark Judge Trademark Trial and Appeal Board Staffing, Filings - 1992 * 1992 — 8 Judges plus chief judge; 6 interlocutory attorneys (15) yt 9s * 814 Appeals from Refusals _ * 3,296 Oppositions * 1,027 Cancellations ¢ 125,237 Application classes Se dane | Sc a Staffing, Projected Filings - 2017 2017 - 24 Judges + chief + deputy chief; 14 interlocutory attorneys + managing attorney; TBMP editor (42) 3,306 Appeals from Refusals (+306%) 6,282 Oppositions (+91%) 2,018 Cancellations (+96%) 570,000 Application classes (+355%) FY 2017 Ln arA0s i) Actual, Through p FY 2017 TTAB Performance Measures OT Coe ean ees A ETare Tare Projected JUDGES and ATTORNEYS (actuals) Administrative Trademark Judges 24 24 24 On target Interlocutory Attorneys 14.6 14.6 13.6 cpt Pladitons FILINGS eh Notices of Appeal 3420 1,653 +5.9% Extensions of Time to Oppose 19,055 9152 3.9% Notices of Opposition 5,881 3,141 +6.8% Petitions to Cancel 1,848 1,009 +9.2% FY 2017 TTAB Performance Measures PRODUCTION-DECISIONS Cases Decided on Merits Precedential Decisions Issued | Contested Motions Decided . Uncontested Motions Processed - CUSTOMER SERVICE DESK Number of Calls Answered Number of Service Requests Quality of Call Responses FY 2016 EOY Results 8,597 7,423 90.65% a arith Actual, aE lco[ mols Projected 314 35-40 12 (target) 604 15,897 4,920 5,504 95.66% Through March 2017 Variance -8.7% Expected -11.6% +6.2% $2.3% I< +18% 5-7 +5.5% FY 2017 FY 2016 Through f FY 2017 TTAB Performance Measures Rea eee pra tel eRe eth Variance or Projected PENDENCY- Contested Motions (targets) (1) Measured from ready-for decision until mailing; average of orders on contested 8.2 weeks 8-9 weeks 8.1 weeks On target motions, excluding precedents, issued during (avg.) reporting period (2) Age of single oldest contested motion 11.4 weeks 12 weeks or 11.4 weeks On target ready for decision at end of reporting period less INVENTORY—Contested Motions Ready for Decision Cases with The number of cases with contested motions Motions a, in which briefing was completed, becoming 117 145-175 Ly eee ready for decision, as of the end of the (target) i reporting period FY 2016 Laem ae NR ee out eed EOY Results PENDENCY- Final Decisions (Cancellations, Oppositions, Ex Parte Appeals) Measured from ready for decision date until ~ mailing for final decisions, excluding precedents, in appeals and trial cases during 9.2 weeks reporting period INVENTORY—Cases Ready for Final Decision The number of pending appeals and trial Ex Parte cases in which briefing was completed, or in Appeals which briefing and arguments were 56 completed, thus becoming ready for decision | Oppositions on the merits, as of the end of the reporting 22 period Cancellations Bi a erat Bicol eli) a VERE? Variance or Projected 10-12 weeks 7.8 weeks Better than (target) target Ex Parte Total Case Appeals Inventory 65 107 cases 130-160 Oppositions (Better than (target) 23 target) Cancellations 19 mud eth, be Ft seach? Cet aa alee 2 ward Gee packie fies Suu, we RCE ia ars Actual, Through ia arden) FY 2017 TTAB Performance Measures EOY Results Target or | March 2017 PUES Projected TOTAL PENDENCY Average total pendency, commencement to completion, excluding precedents Appeals 39.7 -1.3% (528 decided FY16; 235 in FY17) weeks 39.2 weeks Trial Cases 154.3 +9.4% (160 decided FY16; 79 in FY17) weeks 168.8 weeks ACR Trial Cases 98.4 122.9 weeks +24.9% (23 decided FY16; 7 issued in FY17 and 7 Scere assigned and in process) Ts IT Changes ¢ ESTTA enhancements occurred after midnight January 13, 2017 * Additional enhancements planned for June 2017 nna IT Changes ¢ Extensions of Time to Oppose processing altered to accommodate new fees for some extensions * New link to notice of opposition added to email notice of institution Tn IT Changes * Certificate of Service options for indicating method of service for (1) Consent Motion and (2) Change Correspondence Address forms had email added, now that it is the default method for service Fn IT Changes * Expanded party email address fields * More automated processing of extensions of time to oppose, notices of appeal, and notice of opposition when email for applicant on record Jue Vr deles : oe weien 4.0 Dee haa an — p ues > rice: ) where Quel addliegs att Be & “TRAM = cawenh gratis Sbcdude (iternl ats Ly erway, by poste yelled © 73 ~ MST B prretet wl Qs for fraclress wren states BATENT ANS FRaDeMank OFFICE u Tae New Cancellation Proceeding? * Office drafting a Request for Comments-—— Cemed wes DD ¢ May establish a streamlined ve sion of cancellation proceeding for handling abandonment and nonuse claims * Goal to improve accuracy of the use- based register; responsive to stakeholder requests for option to clear deadwood ee New Cancellation Proceeding? ¢ Rooted in existing law; no statutory changes needed * Limited to assertion of two claims: > abandonment (nonuse + no intent to resume) and/or > no use for all/some goods/services prior to 1(a) filing date, or AAU filing date, or SOU filing date Tn Pleading with Proof ¢ Petition must allege facts with particularity re: standing & ground and be supported by evidence (e.g., declaration regarding unsuccessful search for use of mark) ¢ Respondent answer due in 40 days; defenses limited; with proof of use or excusable nonuse, responsive to petition | «| << oo aes Reply? Withdraw? Convert? * Petitioner has 40 days to elect: > Reply with rebuttal evidence, then 90 days to TTAB decision; >» Withdraw without prejudice to later filing of petition on other grounds; > Convert to full cancellation proceeding with additional pleadings, discovery, trial Tena Process Provisions * Respondent, separate from answer, may seek discovery on petitioner standing =. “oO * No stay of deadlines for answer, petitioner options to reply, withdraw, convert ¢ Discovery permitted only if it appears could be outcome determinative; TTAB would set schedule for discovery, motion ee Additional Timing Issues ¢ Respondent default could result in judgment in approximately 70 days * One extension per party (for answer, reply) * Suspensions rare, and for court litigation ¢ Decision on merits could issue in 170 days PATENT AND TRADEMARK OFFICE {e) John Owens Chief Information Officer urteo stares John Cyrus BAER IRS Rapemanc orice Portfolio Manager uspto Trademark Next Generation (TMNG) Overview of Trademarks Next Generation (TMNG) Investments + TMNG: FY11 - FY15 (Closed) — Deliver TMNG framework, infrastructure, aid Examination capabilities sn posh wg * TMNG-2: FY15 — FY19 (Active) — Deliver Examination capabilities (deferred from TMNG), and Non-Examination capabilities specific to examiner and support dockets, international applications, and petitions * TMNG-External: FY13 - FY19 (Active) — Deliver TMNG capabilities to support external Trademarks customers + Deliver ID Manual and Electronic Official Gazette capabilities * Develop requirements, create forms and workflow procedures for TMNG-eFile + Integrate MyUSPTO and TMNG capabilities as needed + TTAB-NG: proposed for FY19 — Deliver capabilities for TTAB internal and external users Lobe wkd wis Te 89 ne TMNG-2 Accomplishments * Developing end-to-end electronic workflow for trademark examining attorneys: — Processed 17,197 Office Actions using TMNG Examination as of March 2017 — Increased the number of beta testers to 70+ — Deployed TMNG Examination enhancements and defect fixes (ongoing) + Completed three deployments since last TPAC meeting which included enhancements and significant defect fixes — Reviewed, assessed and documented docket-related transactions, workflow and requirements + Completed analysis of Docket workflows + Identified additional user stories associated with examiner dockets * Will continue efforts until all user stories are identified — Continued efforts to capture defects through the Service Desk 90 Te TMNG-External Accomplishments * TMNGIDM (ID Manual) is fully operational; legacy system utilizing new ID Manual as of January 2017 * Documenting business requirements for TMNG-eFile in parallel with competitive acquisition activities (ongoing) ‘ ay Yeo lean Lary Ne OO Legacy Accomplishments * Deployed TEAS and TEASi enhancements — Revised declaration statements in response to customer feedback — Simplified form language for saving form data — Created new alert messages to display when payment system is unavailable — Simplified filing receipts and listed next steps in the process * Deployed ESTTA and TTABIS enhancements — Implemented regulatory changes — Amended rules of practice and new fee codes — Updated forms 92 SY Ta Upcoming TMNG Work * TMNG-2 — Deploy TMNG Examination capabilities to Trademark Law Offices * Collect, evaluate criticality of any defects and gap requirements (ongoing) * Train Law Offices - TBD + Roll out to Law Offices - TBD go + Further training and rollout is dependent on delivery and acceptance of TMNG cavstden Examination pegs ve — Define, develop and deploy TMNG Dockets, and International MS Wed Applications capabilities - Continuing through FY18 /* TMNG-External Lvalagadedt — Develop and deploy eFile capabilities - Continuing through FY18 sete Vo) ee F . dea, reps eens ~ dak. gebtens & cornet 93 cee pas ee Upcoming Legacy Work * Update TEAS forms to incorporate changes due to revivals, reinstatements and petitions to the Director rules package (FY17) ¢ Enhance TTAB capabilities based on prioritized customer feedback (FY17) * Develop and deploy Madrid enhancements FY18) & Comments General Public 2

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