2011-4618. Coding of Design Marks in Registrations

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (“USPTO”) is discontinuing the practice of coding newly registered trademarks that include a design element with design mark codes based on the old paper search designations. The USPTO will continue to code all pending applications that contain a design element using a numerical design code system modeled after the International Classification of the Figurative Elements of Marks (“USPTO Design Classification”).

DATES:

Effective immediately.

FOR FURTHER INFORMATION CONTACT:

Cynthia C. Lynch, Office of the Deputy Commissioner for Trademark Examination Policy, by telephone at [phone].

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 in electronic form.

On December 28, 2010, the USPTO published a notice and request for comments at 75 FR 81587, proposing to discontinue a secondary system of coding designs contained in registered marks. The USPTO received only one comment, from an organization supporting the proposed discontinuation and encouraging the USPTO to use the cost savings to develop and support electronic initiatives. This comment is posted on the Office's Web site at http://www.uspto.gov/​trademarks/​law/​FR_​Notices_​2010.jsp and is addressed below.

The proposed discontinuation of the secondary system, the Trademark Search Facility Classification Code Index (“TC Index”), stems from its inferiority to the primary system of design coding, which is much more specific, precise and robust; the infrequent use of the TC Index codes in searches by the public; and its costliness to maintain, especially in proportion to the low usage of the system. 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, systems maintenance, and support costs.

Changes: USPTO Discontinuing TC Index Coding

In view of the lack of any public comments opposing the discontinuation and the public comment supporting it, the USPTO is discontinuing the practice of design coding newly registered trademarks with TC Index codes. Terminating the dual design-coding system will result in cost savings and will free the USPTO staff to perform more valuable services for the public.

All existing registrations coded with paper search designations will remain available in the Trademark Electronic Search System (“TESS”) and on microfilm. The USPTO has updated TESS Help to reflect that searching by the TC Index code will only retrieve registrations coded from August 28, 2007, through January 31, 2011. The USPTO strongly advises all users to rely solely on the primary system, Design Search Code (“DC”) field, in TESS when performing searches for pending applications and active registrations for marks that include a design element. The USPTO will continue to code all pending applications that contain a design element with the USPTO Design Classification shown in the DC field. Examining attorneys will continue to rely solely on the USPTO Design Classification for examining and approving applications for marks with design codes for Federal registration.

Comment: The commenter supports the USPTO's decision to discontinue the TC Index and encourages the USPTO to redirect the resulting cost savings to assist users in electronic environments such as the Trademark Next Generation program.

Response: Eliminating the TC Index coding will allow the USPTO to devote more of its limited resources to the maintenance and improvement of the USPTO Design Classification system, which provides the public with more precise search parameters than are possible with the TC Index codes. It will also allow the USPTO to devote more resources to enhancing electronic communications through the Trademarks Next Generation information technology initiative. In connection with this initiative, the USPTO is currently reviewing suggestions for improvements to the electronic systems and will begin implementing many of them in the coming months.

The USPTO invests heavily in its publicly available electronic search systems to ensure their maintenance, and commits considerable resources to enhancing and improving electronic search capabilities. The USPTO is dedicated to ensuring the quality and accuracy of design coding under the USPTO Design Classification system. The USPTO Design Classification codes will continue to be subject to internal quality review and external review by applicants, registrants and the public, which further ensures correct design coding.

Accordingly, the USPTO hereby gives notice that the USPTO is discontinuing coding design marks with paper search designations.

Dated: February 24, 2011.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.