United States Patent and Trademark Office OG Notices: 18 July 2006
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-T-2006-0013]
Request for Comments on
Removal of Paper Search Collection of
Marks That Include Design Elements
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office ("USPTO") requests
comments on a modified plan to remove the paper search collection of marks
that include design elements from the USPTO's Trademark Search Facility and
replace them with electronic documents. The USPTO has determined that the
paper search collection is no longer necessary due to the availability and
reliability of the USPTO's electronic search system.
DATES: Comments must be received by August 22, 2006 to ensure consideration.
No public hearing will be held.
ADDRESSES: The Office prefers that comments be submitted by electronic
mail message to TMSearchComments@uspto.gov. Written comments may also be
submitted by mail to the Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building, East Wing, 600 Dulany Street, Alexandria, Virginia, marked to
the attention of Mary Hannon; or by electronic mail message via the
Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site
(http://www.regulations.gov) for additional instructions on
providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection on the Office's
Web site at http://www.uspto.gov and in the Office of the Commissioner
for Trademarks, Madison East, Tenth Floor, 600 Dulany Street,
Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of the Commissioner
for Trademarks, by telephone at (571) 272-9569.
SUPPLEMENTARY INFORMATION:
Background
Under 35 U.S.C. 41(i), the USPTO must maintain a collection of
United States trademark applications and registrations for use by the
public in paper, microform, or electronic form. The provision
authorizing an electronic search collection was added by section
4804(d)(1) of the American Inventors Protection Act of 1999
("AIPA"), Title IV, Subtitle B of Public Law 106-113, 113 Stat.
1501, 1501A-589. Section 4804(d)(2) of the AIPA provides that the USPTO
can eliminate the paper or microform search collection only pursuant to
notice and opportunity for public comment, and only after submitting a
report to the Committees on the Judiciary of the Senate and the House
of Representatives detailing its plan for removal, and certifying that
the implementation of such plan will not negatively impact the public.
The USPTO has previously provided opportunities for the public to
comment on the proposed removal of USPTO's paper search records. See
notices at 66 FR 45012 (August 27, 2001) and 67 FR 17055 (April 9,
2002). A public hearing was held May 16, 2002. Comments were reviewed
and analyzed, and a modified plan addressing the issues raised during
the public comment period was developed.
On July 24, 2002, the USPTO submitted a report to Congress detailing a
plan for removal of a portion of its paper search collection. However,
in response to allegations from the public that there were too many
design coding errors in the USPTO's electronic system, the USPTO
decided to temporarily retain the portion of the paper collection that
includes design coding, and modified its plan accordingly. A report
detailing the modified plan was submitted to Congress on May 7, 2003.
On May 9, 2003, the USPTO certified to Congress that the USPTO could
cease to maintain a paper search collection of marks that consist only
of words, without harm to the public. The 2003 report and certification
are currently available on the USPTO Web site at
http://www.uspto.gov/web/offices/com/sol/comments/epubsearch/crtpapr.pdf.
While the 2003 report and certification remain effective, the United
States subsequently entered a stipulated settlement in National
Intellectual Property Researchers Association, Inc. v. Rogan, Civ.
A. No. 03-808-A. Among other terms, the settlement required that the
USPTO continue to maintain its paper search collection through at least
January 1, 2006, to publish a Federal Register notice 60 days prior to
ceasing maintenance, and to create microform copies of all paper
trademark registrations and expired trademark registrations prior to
disposing of them.
Since submission of the report to Congress, the USPTO has taken many
additional steps to improve the quality and integrity of its electronic
search system.
Existing Search Facilities
The USPTO currently maintains a searchable database of
registered marks and marks in pending applications. The public can
access the database in the Public Search Facility on the premises of
the USPTO and also on the USPTO Web site. The database available on the
USPTO premises is called X-Search. On the Web site, the database is
referred to as the Trademark Electronic Search System ("TESS").
TESS provides the same data and images as X-Search, and the data is
updated according to the same schedule. TESS and X-Search contain text
and images of all marks in live registrations and pending applications.
They also include text and images of marks in abandoned, cancelled and
expired records dating back to 1984. Government insignia protected by
U.S. law or by Article 6ter of the Paris Convention, and insignia that
various federally and state recognized Native American tribes have
identified as their official tribal insignia, are also included.
Trademark examining attorneys have relied exclusively on the electronic
search system since before 1990, and public use of the electronic
search system has increased substantially.
Public Search Facility. The public can access X-Search in the Public Search
Facility at the USPTO's main offices in Alexandria at 600 Dulany Street,
Alexandria, Virginia, James Madison Building - East Wing. Training is
available. In addition, the public can view and print the contents of
trademark application and registration files through the Trademark Image
Capture and Retrieval System ("TICRS"), and can view and print Trademark
Trial and Appeal Board ("TTAB") proceeding files through TTABVUE. Status
and prosecution history information is available through the Trademark
Reporting and Monitoring ("TRAM") System. Electronic searching of trademark
assignment records is also available, as are microfilmed deeds, and
indexes. All trademark registrations that expired or were cancelled
prior to 1990 are available on microform.
The USPTO maintains a separate search facility at 2900 Crystal Drive,
Arlington, Virginia, which contains a paper collection of registration
certificates for active and some expired registrations.
Internet Searching. The public may also search text and images of
registered marks and marks in pending and abandoned applications on the
USPTO Web site at http://www.uspto.gov, using TESS. Trademark assignment
records can be searched on-line through Assignments on the Web ("AOTW"),
and status and prosecution history information can be obtained on-line
through the Trademark Applications and Registrations Retrieval ("TARR")
database. In addition, the public can view and print the contents of
trademark application and registration files through the Trademark Document
Retrieval ("TDR") portal, and can view and print TTAB proceeding files
through TTABVUE. There is no charge for this information.
Discussion
The USPTO has recently taken a number of steps to improve the
quality and accuracy of its electronic search system.
Pseudo-Marks. For some marks, the USPTO has added a pseudo-mark field to
the electronic system to assist users in locating relevant marks. The
pseudo-mark consists of spellings that are similar or phonetically
equivalent to a word mark, or the literal equivalent to a pictorial
representation of wording in a design mark. Pseudo-marks provide an
additional search tool for locating marks that contain an intentionally
altered spelling of a normal English word. X-Search and TESS also permit
users to search other elements that cannot be searched in the paper files,
such as filing date and owner name and address.
Design Marks. In October of 2004, the Office issued an Official Gazette
notice inviting the public to submit suggestions regarding the design codes
and pseudo-marks entered into the USPTO database, in order to enhance the
quality of the pseudo-mark data field and the design coding of images in
TESS and X-Search. See Invitation to the Public to Submit Suggestions
Regarding Database Design Codes and Pseudo-Marks (TMOG Oct. 19, 2004) on
the USPTO Web site at
http://www.uspto.gov/web/offices/com/sol/og/2004/week42/patsugg.htm.
Between September 23, 2005, and November 9, 2005, the USPTO received
1792 suggestions for correction of design codes and pseudo-marks in
pending applications and registrations. Changes were made in 1583
cases, and no changes were deemed appropriate in the other 209 cases.
In October of 2005, the USPTO began sending out notices to every
applicant whose mark has a design element, usually in the form of an
e-mail message to the applicant or its attorney. Each notice lists the
design code(s) that have been applied to the mark, explains what the
codes mean, and sets forth a phone number or e-mail box that the
applicant can use to suggest corrections or additions to the design
codes that the Office has applied. On April 4, 2006, the USPTO began
sending notices to applicants whose marks have a pseudo-mark inviting
them to correct or add to the pseudo-mark field. Thus, all applicants
are given notice and may comment on how a mark is coded and/or what
pseudo-mark should be applied. The USPTO regards this as an optimal
quality check, since applicants have the strongest interest in assuring
that the public can find their applications and registrations. The
USPTO will continue to maintain and monitor these e-mail boxes for the
use of the public.
The Office has design coded approximately 25,723 applications between
November 2, 2005, and April 26, 2006, and has received approximately
877 suggestions for corrections or additions to the coding for
particular marks in its design code e-mail box. Design codes were added
in 464 cases; and no changes were appropriate in the other 413 cases.
Employee Training and Quality Review. The USPTO administered an examination
to its employees and government contractors to ascertain their proficiency
in properly tagging data, applying design codes and creating pseudo-marks.
Quality reviewers, selected on the basis of the proficiency exam, now
review all data tags, pseudo-marks, and design codes before they are
uploaded into the automated system. Monthly refresher training on design
search codes, pseudo-marks and tagging is provided to employees, which is
designed to address problem areas that are identified by the reviewers
during the quality review process.
Proposed Changes
Pursuant to AIPA Sec. 4804(d)(2), the USPTO is announcing a
modified plan for removal of the paper search collection from the
Trademark Search Facility.
Word Marks. The electronic search system provides equivalent functionality
to the paper files and superior storage, maintenance and efficiency
features. For the reasons discussed in this notice and in the report to
Congress dated May 7, 2003, the USPTO plans to remove the paper collection
of active and expired trademark registrations that consist only of words.
The USPTO has determined that a paper collection of registered word marks
is no longer necessary, and has met the requirements of the AIPA with
respect to their removal. All papers will be microfilmed prior to removal
and the microform collection will be available to the public in the Public
Search Facility at 600 Dulany Street, Alexandria, Virginia. This will
ensure that all information currently available in the paper search
collection remains available to the public. The USPTO expects to complete
microfilming by March of 2007. Once microfilming is complete, the USPTO
will discard the paper collection of marks consisting only of words.
The USPTO will issue a notice 60 days prior to removal. The microform
collection will be equivalent to the existing paper collection. The
USPTO believes that, even absent the microfilming project, removal of
the paper collection will not negatively impact the public. Because the
USPTO will continue to maintain all existing word marks in
non-electronic form, i.e., on microfilm, the certification requirements
of AIPA Sec. 4804(d)(2) are not applicable to such marks.
Design Marks. Marks containing design elements are searchable by design
codes. Currently, different coding systems are used for the paper and
electronic search systems. The paper design classification system, in which
design marks are organized by specific designations (such as "trees,"
"grotesque humans" or "circles"), is unique to the USPTO. The electronic
system uses the International Classification of the Figurative Elements of
Marks ("Vienna Classification"). The Vienna Classification is based on a
multilateral treaty administered by the World Intellectual Property
Organization. It is a numerical classification index that codifies
figurative design elements into categories. Each design element in a
specific section is assigned a six-digit number. Design marks are coded
by identifying the significant design elements and assigning the
appropriate codes. The design codes cover all of the possible designs
that can be put into a trademark application and are used to search
design marks.
A Design Search Code Manual is available on the USPTO Web site at
http://www.uspto.gov. This manual contains guidance
describing elements that are included or excluded from specific codes,
cross-references directing the user to related codes, and other
explanatory notes and guidelines. The design code manual was recently
upgraded to add images to each six digit design code, so that at least
one example is now given for each of the six digit design codes.
Further, the examples in the manual have been updated and improved.
Also, the introduction and general guidelines were rewritten to make
them clearer, and many new terms were added to the alphabetical index.
The Office has a team working on additional improvements to the manual.
To ensure greater accuracy and flexibility in searching designs, the
USPTO is developing a new design code field to be added to TESS and
X-Search, which will mirror the existing codes in the paper search
files. The USPTO will also continue to apply the Vienna Classification
System codes now used in TESS and X-Search to all design marks. Thus,
the USPTO plans to create a redundant search system that will allow
anyone using TESS or X-Search to use the Vienna Classification System,
the design coding system now used in the paper search files, or both.
While this new design coding system is being developed and tested, the
USPTO will continue to add design code registrations to the paper
search collection in the Arlington, Virginia paper search facility.
Once the new coding system has been tested, the USPTO will: (1) Begin
coding all design marks in incoming applications and new registrations
using the new coding system; (2) stop adding design coded registrations
to the paper search collection; and (3) begin microfilming the paper
search collection of design marks. When microfilming is complete, the
USPTO will discard the paper search collection of design marks.
This plan will result in a highly reliable system that is far superior
to the existing paper system. It will create a redundant search system
that will be available to all members of the public, not just those on
the premises of the USPTO. If a design coding error is made in one
system, the design mark in a pending application or registration will
be found in a search using the other coding system, since it is
unlikely that the same error would be made in both systems.
The new redundant design coding system will not be applied to the
backfile, i.e., to applications filed or registrations issued before
the date on which the system is implemented. However, all information
now available about these applications and registrations in the paper
search collection will remain available to the public in microform in
the Public Search Facility. Thus, all information currently available
will remain available in non-electronic format.
For the reasons discussed above, the USPTO believes that removal of
the paper search collection of marks that include designs will not
negatively impact the public. All existing paper records will remain
available in microform. Design coding errors will be reduced through
checking by applicants and internal training and quality review
procedures. The creation of the on-line dual design coding system will
benefit the public because it will be available to all members of the
public through the Internet.
Any interested member of the public is invited to provide comments on
this modified plan to eliminate the trademark paper search collection
of marks that includes design elements. Once all comments have been
reviewed and addressed, and any necessary modifications have been made,
the USPTO will submit another report to Congress detailing its plan.
The paper collection of marks containing designs will not be removed
until the USPTO has certified that the implementation of such plan will
not negatively impact the public. An additional notice to the public
will be issued 60 days prior to removal.
June 15, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office