(475) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Docket No. PTO-T-2010-0090
Coding of Design Marks in Registrations
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice and request for comments.
SUMMARY: The United States Patent and Trademark Office ("USPTO") proposes
to discontinue its secondary design coding, the practice of coding newly
registered trademarks in its searchable electronic database with design
mark codes based on the old paper search designations.
DATES: Comments must be received by [Insert date 30 days from the date of
publication in the Federal Register] to ensure consideration.
ADDRESSES FOR COMMENTS: The USPTO prefers that comments be submitted via
electronic mail message to TMFRNotices@uspto.gov. Written comments may also
be submitted by mail to: Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Cynthia C. Lynch; by hand-delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Cynthia C. Lynch; 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 USPTO's Web site at http://www.uspto.gov and
will also be available at the Trademark Legal Policy Office, Madison East,
Fourth Floor, 600 Dulany Street, Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at
(571) 272-8742.
SUPPLEMENTARY INFORMATION:
Background
Pursuant to 35 U.S.C. 41(i)(1)-(2), the USPTO maintains a publicly
available searchable collection of all United States trademark
registrations. Initially, the collection was provided in paper form only.
Currently, the USPTO provides the collection in electronic form.
When the trademark collection was maintained in paper form, marks were
searched in tall cabinets located at the USPTO's Public Search Facility. In
addition to the public, trademark examiners searched using the paper
collection to determine whether registration should be refused pursuant to
15 U.S.C. 1052(d). Design marks were separated into design categories,
groups, types, or divisions, subdivided into specific representations
according to the U.S. class of goods or services covered in the
registrations, and then arranged in ascending order by registration number.
Marks with multiple design elements generally had to be searched
separately, which was both challenging and time-consuming.
In an effort to improve the efficiency of searching for the public and
USPTO examiners, the USPTO began developing a searchable electronic
database of marks in 1982. By 1988, the USPTO's trademark examining
attorneys used the automated system exclusively to conduct their searches.
The USPTO also began to provide public access to the trademark database of
active registered and pending marks through the Public Search Facility and
later on the USPTO Web site.
When developing the new automated search system, the USPTO also
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developed a new numerical design code system, modeled after the
International Classification of the Figurative Elements of Marks ("USPTO
Design Classification"), which was intended for an electronic environment
and would enable searching multiple design elements in one search. In this
system, each design element is generally assigned a six-digit numerical
code: the first two digits indicate the category type (e.g., category 01 is
celestial bodies, natural phenomena, and geographical maps), the next two
digits indicate the division (e.g., 07 is globes), and the last two digits
indicate the section (e.g., section 05 is globes held by a human). This
numerical design code system is more robust than the paper search design
code system, which relies exclusively on a word or term to identify a
design element and cannot achieve the level of detail of the numerical
system.
In conjunction with the new design code system, the USPTO also provided
(and continues to provide) a Design Search Code Manual ("Manual") that
includes an index, provides guidance on and examples, cross-references
related material, and gives tips on searching using this system. The Manual
is available to the public on the USPTO Web site.
In 2002, the USPTO submitted a report to Congress detailing a plan for
the removal of a portion of its paper search collection. However, in
response to public concern about relying exclusively on the electronic
system, the USPTO decided to temporarily retain the paper collection of
registrations with design coding, while improving the accuracy of its
electronic database, and modified its plan accordingly.
In 2007, the USPTO submitted a new report to Congress with updated
information about the improved accuracy of its electronic database and
USPTO Design Classification coding, microfilmed all paper trademark
registrations that include design elements, and removed the entire paper
search collection from its search facility. At the same time, the USPTO
replicated in the automated search system the paper design code system,
exhibiting these word-based codes in a new data field for the electronic
search system called the Trademark Search Facility Classification Code
Index ("TC Index"). The TC Index allowed those who wished to search using
the old paper designations to continue to do so in the electronic database.
Proposed Changes
After more than three years of coding under both the TC Index and USPTO
Design Classification systems, the USPTO proposes to discontinue applying
the TC Index code system to registrations because it is no longer
cost-effective and is never used by USPTO examining attorneys and rarely
used by the public.
Currently, the assignment of TC Index codes to active U.S. trademark
registrations in the searchable electronic database costs approximately
$531,000 per fiscal year for staffing and systems maintenance and support
costs. Terminating the dual design-coding system will result in cost
savings and will free the staff to perform more valuable services for the
public.
Searches based on the TC Index coding appear to be quite minimal. For
example, Trademark Electronic Search System ("TESS") searches conducted
from January 1, 2010 though July 31, 2010, show that of the on-average
2,531,680 searches conducted per month, on average only 229 employed the TC
Index coding to search. By contrast, 2,805 searches, on average, relied on
the USPTO Design Classification. Thus, the vast majority of design searches
are currently performed using the USPTO Design Classification system. USPTO
examining attorneys also rely exclusively on the USPTO Design
Classification system to search.
Compared with the USPTO Design Classification coding system, the TC
Index coding system provides little or no benefit to users that would
justify the cost to maintain it. The very general categories of designs
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result in cumbersome and time-consuming searches, generating sometimes
enormous results lists for users to review. For example, the TC Index
coding system groups stars under the design code SHAPES-ASTRO, which
encompasses all astronomical shapes consisting of celestial bodies (such as
the moon, sun, stars, planets, etc.), globes, and geographical maps.
Searching this TC design code generates approximately 16,001 registrations
and there is no mechanism for restricting the search to five-pointed stars,
or six-pointed stars, or groups of stars. Users must expend considerable
time reviewing all registered marks containing celestial bodies, globes,
and geographical marks to locate the specific types of star marks that are
of interest to them.
Searches using the TC Index codes can also provide imperfect results.
For example, the TC Index does not have a specific code for Braille, and
images are coded as SHAPES-CIRCLES, which retrieves over 45,000 search
results. Searching large numbers of circles is an inefficient way to locate
Braille marks. Searches generally are also less accurate than those
performed using the USPTO Design Classification coding system.
By contrast, advances in coding under the USPTO Design Classification
and its greater specificity provide the public with more precise and
accurate search results than are currently available through the use of the
TC Index codes. Additionally, the USPTO Design Classification is applied to
pending applications for marks with designs as well as to registered marks
with designs, thereby making it more useful in assessing potential
likelihood of confusion. Examining attorneys rely solely on the USPTO
Design Classification for examining and approving applications for marks
with design codes for Federal registration.
The USPTO invests heavily in its electronic search systems, and commits
considerable resources to ensuring the quality of design coding under the
USPTO Design Classification system. When an application with design
elements is filed, specially trained Federal employees in the
Pre-Examination section of the USPTO review the mark drawing and assign
USPTO Design Classification codes. In 2008, the USPTO amended the Rules of
Practice in trademark cases to require a description of any mark not in
standard character, in order to obtain the applicant's characterization of
design elements to assist the USPTO in making accurate and comprehensive
design-coding determinations. For example, employees use the applicant's
mark description to clarify ambiguous design elements, thereby promoting
correct design coding. The USPTO continues to provide comprehensive
training to Pre-Examination employees on coding marks with design elements
to ensure accuracy in coding. In addition, the USPTO performs quality
review of the work of the employees, which improves confidence in the
consistency and accuracy of the design coding.
The design coding in an application is reviewed again when a mark with
design elements is assigned to a well-trained examining attorney to
determine whether federal law permits registration. The examining attorney
reviews the mark, the design codes, and the mark description and may
determine whether codes should be added or deleted. In 2008, the USPTO also
provided rigorous training to its Legal Instruments Examiners, who assist
in reviewing and updating application and registration data, on coding
under the USPTO Design Classification. This review of design coding by
different groups at the USPTO has greatly increased accuracy and decreased
subjectivity in coding.
The USPTO Design Classification codes are also subject to external
review by the public, which further ensures correct design coding. Each
applicant for a mark that includes a design element receives a notice from
the USPTO identifying the USPTO Design Classification codes assigned to
their mark and providing detailed instructions on how to suggest additions
or revisions to the assigned codes. Since 2005, the USPTO has sent
approximately 367,000 such notices. These notices provide applicants with
an opportunity to enhance the quality of the design coding of marks with
design elements.
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After a mark registers, filing receipts for post-registration filings
submitted via the Trademark Electronic Application System notify
registrants of the ability to request additions or corrections to the USPTO
Design Classification codes assigned to their registered marks.
Furthermore, upon acceptance of a registrant's Declaration of Use and/or
Excusable Nonuse of Mark in Commerce under 15 U.S.C. 1058, the registration
file is referred to USPTO employees for yet another review of the design
codes assigned to the mark. Upon completion of the review, the USPTO
notifies the registrant of the USPTO Design Classification codes assigned
to their registered mark and provides information on revising design codes.
The USPTO Web site also provides information on submitting corrections or
additions to design codes in trademark applications and registrations. Even
members of the public may submit a design coding suggestion. These measures
all help to ensure a high level of coding accuracy.
The USPTO also updated the Manual in 2006 to allow for greater precision
in identifying and coding designs. Many of the larger design-code sections
were modified to create smaller sections. For example, three new design
code entries for stars were added, which allow users to narrow searches to
specific types of stars. These changes result in faster and more efficient
electronic searches with little irrelevant data returned.
In view of the widespread use of the USPTO Design Classification system,
its clear advantages and the limited use of the TC Index system, the impact
of discontinuing coding based on the TC index appears minimal. The public
and the USPTO will realize efficiencies. The USPTO will be able to devote
more of its limited resources to the maintenance and improvement of the
USPTO Design Classification system, which is more widely used by the
public. All existing registrations coded with paper search designations
will remain available in TESS and on microfilm. Design-coding using the
USPTO Design Classification system has continually improved through
internal and external review of the coding and through internal training
and quality-review procedures. The USPTO Design Classification system
provides more accurate results, is available to all members of the public
through the Internet, and is exclusively used by the examining attorneys at
the USPTO.
Accordingly, the USPTO hereby gives notice of its intent to discontinue
coding design marks with paper search designations. Any interested member
of the public is invited to provide comments on this plan within thirty
(30) days. The USPTO is providing this opportunity for public comment
because the USPTO desires the benefit of public comment on the proposal;
however, notice and an opportunity for public comment are not required
under 5 U.S.C. 553(b) or any other law. See Cooper Techs. Co. v. Dudas, 536
F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rule making for
"`interpretative rules, general statements of policy, or rules of agency
organization, procedure, or practice.'" (quoting 5 U.S.C. 553(b)(A)).
Persons submitting written comments should note that the USPTO may not
provide a "comment and response" analysis of such comments as notice and an
opportunity for public comment are not required.
December 21, 2010 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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