Interview: Deborah Cohn, USPTO
Deborah Cohn became the USPTO’s Commissioner for Trademarks in 2011. She spoke with Eileen McDermott about her priorities for the Office, both at home and abroad.
You came straight to the USPTO out of law school in 1983. What did you like so much about the job that you stayed for 30 years?
The subject matter; trademark law has always been really interesting to me. It was my favorite in law school as well, even though when I was in law school there were only very basic trademark courses. I thought it was so fascinating, and I also really enjoy government service and have always loved working at the USPTO.
What has changed most over the last 30 years?
The biggest change has been moving from a heavily paper-based process to an almost entirely paperless one. The level of quality in examination has also gone up tremendously. Examiner training is one big reason for that. When I started there was very little formal training. Now we have a classroom training program and a mentoring program. The expectations have also risen now. We've always attracted high quality people here, but the widespread availability of resources, thanks to the Internet, means there is so much information readily available at our fingertips.
What are your top priorities right now for the Office from an administrative perspective?
One big one is revamping our electronic systems to provide maximum capability and flexibility for our customers. The latest version of the Trademark Electronic Application System (TEAS) was released in November 2011 and included changes such as allowing sound and multimedia files to be included as part of the form, rather than sent separately, the ability to retain attachments on saved forms, and many other enhancements.
Another priority is outreach. We want to get information from our customers and stakeholders to get a better idea of their priorities, so we're planning to enhance our outreach efforts. One of the big questions we've been trying to answer is why people don't use e-filing. More than 98% of users file electronically at first, but not everyone files their additional submissions electronically, even though it's a lot more accurate and cheaper to do so. In addition, not everyone authorizes the USPTO to communicate with them via e-mail. We want to get people on the bandwagon with that, so we've held focus groups about it and as a result we've already made some simple changes.
What kind of comments did you receive?
In some cases, people weren't aware of the availability of e-filing. Others wanted to get their notice of publication three weeks in advance on paper, rather than getting it on the same day electronically. So we started mailing out something in writing three weeks early for e-communicators, which was a simple fix. Another big concern for people was that they were afraid they would miss something due to spam filters, which could mean a loss of rights. So we just changed our e-form to allow multiple email addresses to be included and people have reacted very favorably to that. About 75% of users file everything electronically from beginning to end, but we'd still like to get that number up.
We have also started a trademark educational outreach program directed toward SMEs, students and other non-professionals to increase awareness and knowledge about trademarks. This grew out of the trademark litigation study we conducted and submitted a report to Congress on in April of 2011. In our recommendations, we suggested that people need to find out more about policing. It's one thing to accuse people of being overly agressive, but when it comes time to enforce your own rights you're going to want those mechanisms available to you. We realized that the general public isn't always aware of how to protect trademark rights. We have about 15 to 20 programs set up already with schools and small business associations.
We have also formed a working group with INTA and the American Bar Association to better educate non-trademark attorneys and to provide low cost, pro bono representation.
Will there be any trademark examiners in the USPTO's new Detroit office?
We don't see a reason to be part of that office right now; 90% of our examiners work from home full time so there would be no real benefit.
On the policy side, what has been the USPTO's role in the new gTLD process, and how will it potentially affect the Office?
We have representatives on ICANN's Government Advisory Committee that work on those issues. The National Telecommunications and Information Administration has done most of the work on gTLDs, but we work very closely with them. We're concerned for trademark owners about their rights and how they will protect them, but we're working to make sure there will be protections in place.
Is there any fear that the Office might be bombarded with new applications as a result of the expansion?
That's very possible.
What international priorities are you working on?
We're part of the Trademark Trilateral, which the US hosted last on December 2011. China and Korea were invited to join for the first time, and since then they've both come on board, so now it's become the Trademark 5. We're working on a number of projects, such as collaborating to make data more easily available among those offices. It's difficult to harmonize because trademark laws are so different, but we're trying to make global examination easier for applicants in these five countries.
What work are you doing with INTA?
The INTA-USPTO subcommittee has been really responsive and always gives us the best possible information to make good decisions. We're also holding roundtables co-sponsored by INTA around the country, which will give people who are not on that subcommittee a chance to talk with us.
Warning: Don't be fooled by PTO imposters
Cohn and the USPTO are very concerned about a recent uptick in fake solicitations from companies resembling official USPTO correspondence.
The Office has had many complaints about misleading notices requiring fees to register trademarks that are easily mistaken for USPTO notices and fees. "We sent a cease-and-desist letter to one company that had sent a huge number of these notices," says Cohn. The Office is encouraging applicants who receive such solicitations to report them to the Federal Trade Commission as well as the USPTO, including a copy of the notice, whether the recipient initially thought it was an official government communication, and whether fees were mistakenly paid.
"Every time I have spoken in the last month or two, this has been a huge concern for people," says Cohn. "They are very upset about it." For more information on these notices, visit the USPTO website.
Deborah Cohn will be speaking during tomorrow's Academic Day, in room 144C, at noon