(514) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-T-2011-0050]
Request for Comments on Establishment of a
One-Year Retention Period for Trademark-Related Papers
That Have Been Scanned Into the
Trademark Initial Capture Registration System
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office ("USPTO") is
considering establishing a retention period of one year for trademark-related
documents submitted on paper that are subsequently scanned into the Trademark
Initial Capture Registration System ("TICRS"). TICRS is available to the
public through the Trademark Document Retrieval ("TDR") database on the USPTO
Web site. After the expiration of the one-year retention period, the USPTO
would dispose of the paper documents unless, within sufficient time prior to
disposal, the relevant trademark applicant or owner files a request to correct
the electronic record in TICRS, and the request remains outstanding at the
time disposal would otherwise have occurred. Specifically, the proposed one-
year retention period begins on: September 26, 2011, for papers scanned into
TICRS prior to September 26, 2011; or a paper's submission date, for papers
scanned into TICRS on or after September 26, 2011. The proposal would reduce
the costs currently associated with indefinitely warehousing paper documents,
while permitting sufficient time for the review and rarely needed correction
of the scanning of such paper documents.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before November 22, 2011.
ADDRESSES: The USPTO prefers that any comments be submitted via electronic
mail message to TMFRNotices@uspto.gov. Written comments may also be submitted
by mail addressed 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.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the
Deputy Commissioner for Trademark Examination Policy, by telephone at
(571) 272-8742, or by mail addressed to: Commissioner for Trademarks, P.O.
Box 1451, Alexandria, VA 22313-1451, marked to the attention of Cynthia C.
Lynch. 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 Office of
the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany
Street, Alexandria, Virginia. Because comments will be available for public
inspection, information that is not desired to be made public, such as an
address or phone number, should not be included in the comments.
SUPPLEMENTARY INFORMATION: TICRS is the USPTO's database for electronically
capturing, storing, and retrieving all trademark application image files and
most registration image files. The USPTO is nearing completion of a multi-year
project to scan into TICRS all paper documents for every active registered
mark. The data in TICRS is available to the public through the Trademark
Document Retrieval ("TDR") database on the USPTO Web site. The public can
also view the data in TICRS at the USPTO's Public Search Facility in
Alexandria, Virginia.
The majority of trademark applications, and subsequent correspondence
concerning the application, are filed electronically using the Trademark
Electronic Application System ("TEAS") and the file images are stored in
TICRS. To date in Fiscal Year 2011, almost 99% of applications were filed
electronically, and over 72% of applications were processed and disposed of
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electronically. Thus far in fiscal year 2011, approximately 3,897 new
applications were filed on paper, and other paper submissions (i.e.,
correspondence, post registration maintenance documents, etc.) accounted for
approximately 33,482 additional documents. Upon receipt, the USPTO scans all
paper documents and stores the documents electronically in TICRS. Currently,
the USPTO also retains the paper documents after scanning them, even though
the paper documents duplicate the electronic record in TICRS. While not
actively or routinely used, the paper records are available for comparison
purposes in the rare situation where an issue might arise concerning the
accuracy of the electronic records in TICRS.
The USPTO invests heavily in its electronic systems and conducts multiple
reviews of the electronic records in TICRS to ensure accuracy of the data.
After a paper application is scanned, personnel in the Pre-Examination
section of the USPTO review the application record in TICRS and request
scanning corrections, as needed. The record in TICRS is reviewed again when
the application is assigned to a trademark examining attorney who may
determine, as part of the application review, that additional scanning
corrections are necessary. Further review of the record is conducted by the
Post Registration section of the USPTO when registration maintenance documents
are filed. In the first 41 weeks of fiscal year 2011, the USPTO processed only
100 internal requests for the rescanning of paper documents. Relative to the
number of paper submissions, the number of requested scanning corrections is
extremely small.
Currently, paper documents that have been scanned into TICRS are boxed and
sent to a warehouse for storage. The USPTO incurs warehouse storage costs to
maintain the paper records. The USPTO anticipates that these costs will rise
if paper records continue to be stored. Additionally, the USPTO's warehouse
storage space is projected to reach its capacity by mid-year 2012, and
additional warehouse storage space would be necessary, further increasing the
costs.
To address these costs while still allowing sufficient time for the review
and rarely needed correction of the scanning of paper documents, the USPTO
proposes establishing a definite period of time for the retention of paper
records. Specifically, the proposed one-year retention period begins on:
September 26, 2011, for papers scanned into TICRS prior to September 26,
2011; or a paper's submission date, for papers scanned into TICRS on or after
September 26, 2011. This plan will allow the USPTO and the public sufficient
time to review and determine the accuracy of the record in TICRS/TDR and
request any needed corrections, thereby providing assurance that the record
is correct. The plan will also significantly reduce the costs currently
associated with indefinitely warehousing duplicative paper records. Therefore,
the USPTO proposes establishing a one-year retention period for paper
documents for which an electronic record has been created in TICRS/TDR.
Paper filings with electronic and digital media attachments would not be
subject to the one-year retention period and will remain retrievable,
consistent with past practice.
After the expiration of the one-year retention period, the USPTO proposes
to dispose of the paper records, unless a request to correct the electronic
record in TICRS remains outstanding. Requests to correct the electronic
records in TICRS should be e-mailed to "TM-TDR-Correct@uspto.gov" using the
subject line "Electronic Record Correction" at least one month prior to the
expiration of the one-year retention period to allow sufficient time to
process the request. The request should include: (1) the serial number or
registration number; (2) the date and nature of the paper document filed;
(3) a description of the error(s) in TICRS/TDR; (4) the name and telephone
number of the applicant or owner; and (5) a replacement copy of the paper
document, if available. Under the plan, the USPTO will review the request and
update the record within 21 days of receipt, if appropriate. Thus, the
applicant or owner may check TICRS or TDR approximately three weeks after
submitting the request to verify entry of the requested changes.
September 19, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1371 TMOG]