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TTAB looks to clear out deadwood

The new rule changes brought in at the Trademark Trial and Appeal Board (TTAB) have gone smoothly. The TTAB is now looking at bringing in a new cancellation proceeding, INTA Annual Meeting attendees heard yesterday

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Those at the USPTO Users Meeting at INTA received an update from Trademark Commissioner Mary Boney Denison and Trademark Trial and Appeal Board (TTAB) Chief Administrative Judge Gerard Rogers.

Discussing new application filings, Denison revealed the USPTO is projecting 570,000 trademark fee paid classes this fiscal year (ending September 30), an increase of 7.1% over the previous fiscal year. This year, the USPTO has a first action pendency target (from date of filing to first office action) of 2.5 to 3.5 months. It was at 2.6 for 2017 as of April – “we are delighted about that,” commented Denison.

The USPTO now has 836 trademark employees, representing 6% of the USPTO, and 554 examining attorneys. A rush of hires was made before mid-January. “We thought maybe there would be a hiring freeze,” said Denison. “But we don’t take in any taxpayers dollars so we believe we should be able to hire.”

Deloitte recently conducted a project looking at how to improve the customer experience of the USPTO website. Recommendations included improving the website, making searching more understandable and making the ID selection easier to use and simplifying the filing process. Denison drew a laugh from the audience with an example of simplification of the TEAS “Download portable Data” button to “Save Form”.

Denison also noted that the TM5 mid-year meeting takes place at the INTA meeting today. “It is about trying to do those projects that just make it easier for you to file around the world,” she said. One initiative is continuing to make efforts to minimize bad faith filings by exchanging best practices and working with each other to provide more transparent information to users on how the largest trademark offices combat bad faith trademark filings.

TTAB trial case time increases

Rogers gave an overview of TTAB performance. He revealed trial case time is up 9.4% for the year through March 2017, to 168.8 weeks from 154.3 weeks in fiscal year 2016. He noted, however, that this figure could come down by the end of the year and it also comes on top of six straight years of decreases.

USPTO Users MeetingNew TTAB rule changes came into effect on January 14, applying to all pending cases as of that date. The TTAB gave attorneys and judges a great deal of discretion to extend/reset dates or manage cases commenced prior to effective date. “It has gone very smoothly,” said Rogers.

The rule changes include encouraging electronic filing, simplifying various procedures and reducing discovery and trial burdens. “We think it promotes efficiency and clarifies the process in trial and appeal cases,” said Rogers.

The USPTO made sure not to change rules counter to what the Supreme Court said they found valuable about the TTAB in its B&B Hardware decision in 2015. The Supreme Court noted discovery including depositions, testifying under oath, an availability of oral argument and the option for de novo review in district court.

Rogers also revealed that the ex parte appeal filing fee has been increased for the first time in 25 years and the opposition and cancelation filing fee has increased for the first time in 15 years. “However, I can assure you we are still a loss-making organisation!” noted Rogers of the TTAB.

Rogers added that the TTAB may implement a new cancellation proceeding. Under this, it would establish a streamlined version of the cancellation proceedings for handling abandonment and non-use claims. The goal would be to improve the accuracy of the use-based register. “The goal is to clear out the deadwood from the register,” said Rogers. The comments period for this is open until August 14. 

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