United States Patent and Trademark Office OG Notices: 24 July 2007
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Docket No. PTO-T-2007-0020
Notice of the Removal of the Paper Search Collection of
Registered Marks That Include Design Elements from
Trademark Search Library in Arlington, Virginia
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office ("USPTO") hereby
provides notice of the microfilming and removal of the paper search
collection of trademark registrations that include design elements from the
USPTO's Trademark Search Facility in Arlington, Virginia.
DATES: Removal of the paper search collection of trademark registrations
that include design elements shall be effected beginning no sooner than
sixty (60) days from the date of this Notice.
FOR FURTHER INFORMATION CONTACT:
Cynthia C. Lynch, Office of the Commissioner for Trademarks,
571-272-8742
SUPPLEMENTARY INFORMATION:
Background
Under 35 U.S.C. 41(i), the USPTO must maintain a collection of United
States trademark registrations for use by the public in paper, microform,
or electronic form. No such obligation exists with regard to trademark
application files. The provision authorizing an electronic search
collection of registered marks was added by Sec. 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 requires that the USPTO not cease to maintain for use by the public
its paper or microform collections of, inter alia, United States trademark
registrations, except pursuant to notice and opportunity for public
comment, and except where the USPTO Director has first submitted a report
to the Committees of the Judiciary of the Senate and the House of
Representatives detailing a plan to do so. The report must certify that the
implementation of the plan will not negatively impact the public, and must
include a "description of the mechanisms in place to ensure the integrity
of such collections and the data contained therein, as well as to ensure
prompt public access to the most current available information." Id. By
letters dated June 7, 2007, the USPTO submitted the requisite certification
and report concerning its paper search collection of trademarks including
design elements. The report and certification are currently available on
the USPTO web site at http://www.uspto.gov/main/newsandnotices.htm and
http://www.uspto.gov/web/trademarks/reports/reportcongress20070604.htm.
The USPTO currently maintains a searchable electronic database of
registered marks and marks in pending applications, as well as 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 exclusive on
the electronic database since before 1990. The database available on the
USPTO premises is called X-Search, and is accessible to the public at the
USPTO's Public Search Facility in Alexandria, Virginia. On the USPTO web
site, the database is referred to as the Trademark Electronic Search System
("TESS").
Marks that include design elements are searchable by design codes. A
different design coding system is used with the electronic search systems
than has been used with the paper collection of trademark registrations.
The paper design coding system organizes design marks according to specific
designations (such as "trees," "grotesque humans" or "circles"). Since
2001, these paper search designations ("PSD") have been used to code
registrations, but have not been used to code pending applications.
The electronic design coding system is based on the International
Classification of the Figurative Elements of Marks ("Vienna
Classification"). The Vienna Classification arises out of 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 the possible designs that can appear in a trademark, and are used to
search design marks. The Vienna Classification codes are applied to
incoming applications and have been assigned to existing registrations.
The USPTO provides a Design Search Code Manual on its web site, which
contains guidance about the scope of the specific codes of the Vienna
Classification, cross-references directing the user to related codes, and
other explanatory notes and guidelines. The USPTO has recently made
significant enhancements to the Design Search Code Manual, including adding
new design codes to refine searchability, identifying and re-coding all the
current applications or registrations affected by the new design codes, and
increasing and improving the examples given for the numerical design codes.
In response to previous USPTO proposals to eliminate its paper search
collection of registered marks that include design elements, some members
of the public expressed the view that the ability to search both the paper
collection and the electronic database provides better, more accurate
search results, because if a design coding error is made under the Vienna
Classification, the design mark is likely to be found by a paper search
using the PSD. The USPTO considered this concern and developed a plan to
address it.
In a June 23, 2006, Federal Register Notice (71 FR 36065), the USPTO
requested comments on its plan to remove the paper search collection of
registered marks that include design elements from the USPTO's search
facility in Arlington, Virginia, and replace the collection with an
enhanced electronic search system and a microform collection of the paper
search collection. The Notice announced the USPTO's plan to develop a new
design code field for its TESS and X-Search databases, which will mirror
the PSD. Under the announced plan, while the USPTO will maintain the
Vienna Classification now used in TESS and X-Search, the USPTO will also
code new registrations according to the PSD. This dual coding will permit
electronic searching of registered design marks using the Vienna
Classification, the PSD, or both. The Notice further stated the USPTO's
plan that, upon completion of the development of the new design code
system, the USPTO would microfilm the existing paper search collection of
registered design marks, then remove the paper collection. The Notice
provided that the new design code system would not be applied to the
backfile, i.e., to applications filed or registrations issued before the
date on which the system is implemented.
Comments and Responses
In response to the June 23, 2006 Notice, the USPTO received a total of
nine (9) comments from four intellectual property organizations, three
attorneys and law firms, and two individuals. One comment agreed with the
plan and complimented the USPTO on its use of technology to offer reliable
services to the public. Many comments either voiced no objection to or
voiced support for the removal of the paper records, but requested that
steps be taken to verify the accuracy of the electronic capture of the
records and ensure that implementation of the USPTO's plan would not
negatively impact the public. Other comments opposed the removal of the
paper search collection. Several comments included suggestions for
improving the searchability of marks featuring designs of various types
(e.g., three-dimensional design marks, marks featuring colors and shades of
color). These suggestions have been referred to the relevant departments of
the USPTO involving database search systems. However, as those suggestions
do not directly relate to the proposed removal of the paper search
collection, no direct response is provided herein. Responses to
substantively relevant comments appear below.
Comment 1: Microfilm Access
Some comments expressed concern over the need for sufficient access to
microfilm equipment for review of the microform collection, once it is
completed.
Response:
The Public Search Facility in Alexandria, Virginia ("PSF") contains ten
microfilm reader workstations that enable users to view reels of
microfilmed records. Use of such readers is available on a first-come,
first-served basis. Usage of these workstations is monitored by PSF staff,
and the levels of use suggest that no lack of access problems exist or are
likely to arise. However, the PSF has arranged that in the event the use of
such readers increases, and reaches certain threshold levels, the PSF will
install more readers to meet the demand.
The paper collection has been maintained at a USPTO search facility in
Arlington, Virginia, in a separate location from the PSF at the USPTO's
main offices in Alexandria, Virginia, where most of the facilities and
equipment for public searching are located. Once this microfilming project
is complete, and the microfilmed records are relocated to the PSF in
Alexandria, all trademark searching may be done in one location.
Comment 2: Design Coding Error Rate
Several comments expressed concerns about design coding errors under the
Vienna Classification system in the USPTO's electronic database, and voiced
reservations about relying solely on the design coding in the electronic
databases.
Response:
As an initial matter, the USPTO's plan allows for the same redundant
search capabilities as are currently available, with the significant
improvement that for future registrations, they will be available through
the electronic database to all members of the public, not just those on the
premises of the USPTO. The USPTO's plan includes the replication of the PSD
in the electronic database for all newly issued registrations. Thus, these
records will be coded under both the USPTO version of the Vienna
Classification system and the PSD system. The USPTO intends that the coding
of all newly issued registrations with the PSD system will be done by the
same personnel who have previously coded the paper records. With the
continuity of the same staff using the same coding system, the introduction
of an electronic format should not negatively impact the accuracy of the
coding. Use of the same records found on paper but now on microfilm will
provide searchers equivalent resources to those they already use. In
addition, all records will continue to be coded under the Vienna
Classification as well, providing a second design coding scheme which
public searchers may use as part of a dual search strategy. Should an error
have occurred with respect to the coding of an image in one system, it is
unlikely that the same error would be made in the other system. Thus,
search results will have the same level of accuracy as currently produced
in a dual search of both electronic and paper records.
Moreover, recent USPTO efforts to improve design coding under the
existing Vienna Classification system have improved the quality and
searchability of the electronic database. Within the USPTO's Trademark
Services Division, the work of all contracted specially trained design
coders has been subject to 100% quality review by Federal employees for the
past several years. The contracted workers receive training relating to
design coding issues. In addition, the USPTO has created eighty (80) new
design search codes to allow for greater specificity in identifying and
coding designs, has identified all the active applications and
registrations affected by the new design codes, and has updated the
electronic databases accordingly. The new version of the Design Code Manual
featuring these new codes was made available on the USPTO's web site on
January 6, 2007.
In addition, the USPTO has continued to seek input from applicants whose
marks contain design elements, informing them of the design codes applied
to their marks and offering the applicants the opportunity to submit
corrections or additions to the coding. Specifically, each applicant for a
mark that includes design elements receives a notice from the USPTO
explaining design coding, explicitly identifying the Vienna Classification
design codes assigned to the applicant's mark, and providing detailed
instructions on how to request supplements or revisions to the assigned
codes. Since November 2005, the USPTO has sent approximately 82,000 such
notices. Beginning in July 2007, the USPTO will seek similar input from
registrants whose existing registrations are for marks that include design
elements. The USPTO reviews proposed corrections from any source that
pertain to design codes assigned to live registrations or applications, has
designated internal and external e-mailboxes for this purpose, and makes
changes where necessary. A notice announcing the procedure for submitting
proposed corrections was previously published in the USPTO's Official
Gazette and is posted on the USPTO web site.
Internal review of the quality of the USPTO's design coding indicates
that the efforts to improve quality have succeeded. A recent USPTO study
reflects a relatively low error rate in design coding under the Vienna
Classification system. In the USPTO's May 7, 2003, report concerning the
paper public search collections, the USPTO cited a 19% design coding error
rate among a random sample of 1009 applications filed between January 2001
and March 2002. To reevaluate the quality of design coding in the wake of
the many improvement initiatives undertaken by the USPTO, in 2006, the
USPTO conducted recurring random searches of new applications featuring
design-coded marks. Review of the accuracy of the codes applied to the
marks revealed that only 4.5% of records contained errors relating to
significant elements of a mark that would negatively impact the ability to
retrieve such a mark during a search for confusingly similar marks. Thus,
the USPTO's ongoing efforts have significantly reduced the error rate in
design coding.
By the end of 2007, the USPTO will implement an additional quality
enhancement to its design coding under its Vienna Classification system.
Under the new procedure, upon acceptance of a registrant's Sec. 8
affidavit, the registration file will be referred to the USPTO's design
coders, who will review, and revise if necessary, the Vienna Classification
design codes assigned to the registration. Upon completion of the review
and any revision, the USPTO will notify the registrant of the Vienna
Classification codes currently assigned to the registered mark, and provide
information about how to request the addition or correction of these design
codes.
Comment 3: Uncoded Backfile
Several comments expressed concerns that the plan to code only future
electronic records with the PSD system would result in a hindered ability
to accurately search the historic records of the backfile.
Response:
While the USPTO plans to apply the PSD system only prospectively to
electronic records of registered marks, the historic copies of earlier
registrations will be retained in microfilm under their originally assigned
PSD. Thus, a searcher who wishes to search the backfile records using the
PSD will be able to do so through the microfilm collection. The searcher
can then also search the electronic database for the more recent
registrations coded using the PSD system. Through this process, the search
results will be identical to those that would have been retrieved in a
search of the paper records. The USPTO notes that no legal obligation
compels coding the entire backfile with the new PSD system in the
electronic database. The USPTO has determined that the substantial costs
and burdens associated with a voluntary undertaking of this nature would
outweigh any benefit of providing the service, particularly where the
backfile can be searched with the equivalent of the PSD system through the
microfilm records.
Comment 4: Requesting Coding Corrections
One comment noted that the USPTO began sending notices to applicants
inviting them to correct or add to the design code entries assigned by the
Office. The commenter recommended that the USPTO initiate a quality check
invitation to owners of all "live" registrations to assist the Office in
its quality control.
Response:
Beginning in July 2007, the filing receipts for post-registration
filings submitted via the Trademark Electronic Application System ("TEAS")
will notify registrants of the opportunity to request additions to or
corrections of the Vienna Classification design codes assigned to their
registrations. By the end of 2007, the USPTO intends to implement a new
procedure whereby, upon acceptance of a registrant's Sec. 8 affidavit, the
registration file will be referred to the USPTO's design coders, who will
review, and revise if necessary, the design codes assigned to the
registration. Upon completion of the review and any revision, the USPTO
will notify the registrant of the Vienna Classification codes currently
assigned to the registered mark, and provide information about how to
request the addition or correction of design codes.
Currently, the USPTO reviews all proposed corrections from any source,
regarding pending applications or registered marks, either sent
electronically to the USPTO at TMDesignCodeComments@uspto.gov or received
at 1-800-786-9199. A notice announcing such was published in the Official
Gazette on October 19, 2004, and is posted on the USPTO's web site.
Comment 5: Accuracy of Microfilming
One comment expressed concern over the accuracy of the USPTO's
microfilming efforts, citing an allegation that approximately 10,000
drawings may have been missed and not microfilmed in a previous paper
record microfilming project.
Response:
The quality and accuracy of the microfilming effort will be overseen by
the staff of the PSF. The PSF conducted two microfilming projects in 2006,
one of the abandoned trademark application drawing pages and the other of
the pending trademark application drawing pages. PSF staff members with
trademark expertise have overseen both projects, and quality review
inspections have been conducted during each project. Care was taken to
ensure that the quality of the contents of the reels was excellent, and
film quality has been found to be exceptionally high.
With respect to comprehensiveness of image capture, the comment appears
to refer to an incident in one of the projects, where shoes of drawings
that had not been removed during the initial retrieval were located.
Specifically, 34 out of approximately 8,000 total shoes with approximately
270 drawings per shoe had not been removed initially. However, the
oversight was identified while the microfilming project was still in
progress, and these drawings were microfilmed and inserted into the correct
order. Retrieval and filming of the missing records resulted in no impact
on the final product. Thus, although these records were initially
overlooked, this oversight was identified and corrected before completion
of the project, ensuring thorough and accurate results for the project.
In order to ensure that the upcoming microfilming project is complete
and accurate, the PSF will employ a comprehensive quality review procedure
while the project is in progress. The quality review should ensure that all
records are microfilmed. Moreover, there will be a significant "grace
period" before destruction of the paper records, during which they will be
available to the PSF if needed to correct the microfilm.
Comment 6: Marks under Paris Convention or Native American Tribal Insignia
Several comments referred to the alleged inadequacy of the electronic
records with respect to the protected notifications under Article 6ter of
the Paris Convention and the notified Native American tribal insignia.
Response:
As a threshold matter, the USPTO notes that these comments refer to
records that are not registered trademarks, and therefore do not fall
within the scope of the paper search collection at issue. Nonetheless, in
response to the concern expressed in these comments, the USPTO has
undertaken efforts to ensure that its electronic database for such records
is complete. A project is nearly finished to load missing images into the
Office's image data server to make them available for viewing on X-Search
and TESS, and significant progress on the project has already been made.
The USPTO notes that the missing images identified by the project were also
missing from the paper search collection. Thus far, over 125 missing images
have been loaded into the Office's image data server. No paper copies of
protected notifications or insignia will be eliminated until the project is
complete.
Comment 7: Archiving the Paper Record Annotations
One commenter expressed concern that handwritten annotations made to
the paper records of word marks, which may provide assistance in locating
intentionally altered spellings or misspellings, have not been reviewed for
potential incorporation into the pseudo-mark field in the electronic
database.
Response:
The USPTO created the pseudo-mark field to improve the accuracy of
searches in its electronic databases, but the USPTO notes that no statutory
obligation compels the maintenance of this feature. The pseudo-mark field
shows the literal equivalent of a pictorial representation of wording in a
design mark, and/or spellings that are similar or phonetically equivalent
to wording in a word mark. The assignment of pseudo-marks to electronic
records is performed by the Trademark Office within the USPTO. PSF staff
members regularly make recommendations for pseudo-mark assignments, which
may reflect the type of information in the handwritten annotations to the
paper records. Moreover, members of the public may also suggest the
addition of pseudo-marks. As with the design codes, the USPTO has sought
and applied public input regarding the pseudo-mark data in the USPTO
database. For example, since April 4, 2006, the USPTO has notified
applicants whose marks include a pseudo-mark, to allow them the opportunity
to correct or add to the pseudo-mark field. The USPTO has sent
approximately 83,600 such notices.
Although the pseudo-mark field provides a useful tool for searching, the
USPTO is not required to provide this feature. Thus, a decision not to
review an extensive number of documents for potential additions to the
pseudo-mark field does not negatively impact the public. The USPTO has
determined that the burden associated with this type of nonessential review
of each page in the paper search collection, for consideration of all the
handwritten notations, is too great. Nonetheless, because the microfilmed
records will accurately capture the handwritten notations made on the paper
records, the full scope of these notations will be archived for future
reference.
Additional Information
As set forth above and in the June 23, 2006 Federal Register Notice, the
purpose of the new design coding system is to replicate the ability to
search the paper collection using the PSD. Since 2001, no design coding
with the PSD has been done for incoming applications in the paper search
collection. Rather, design coding with the PSD has only been applied to
registrations. Accordingly, in order to replicate the benefits of redundant
searching currently available with the paper search collection, the new
design coding system need only be applied to new registrations, not to
incoming applications. Therefore, the USPTO clarifies that the new system
using the PSD will only be applied to registered marks. This suffices to
ensure that no negative impact on existing search capabilities will result
from the cessation of maintenance of the current paper search collection of
registered marks including design elements.
NOTICE:
Accordingly, the USPTO hereby gives notice that upon the completion of
development and testing of its new redundant design coding system, but no
earlier than sixty (60) days from the date of this Notice, the USPTO will:
(1) begin coding with the new coding system all new registrations of marks
that include design elements; (2) stop adding design coded registrations to
the paper search collection; and (3) begin microfilming the paper search
collection of registered marks that include design elements. When
microfilming is complete, the USPTO will remove the paper search collection
of registered marks that include design elements. 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.
JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office