E7-3853. Notice of the Removal of the Paper Search Collection of Registered Word-Only Marks From Trademark Search Library in Arlington, VA

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (“USPTO”) hereby provides sixty (60) days notice of the microfilming and removal of the paper search collection of registered marks consisting only of words from the USPTO's Trademark Search Facility in Arlington, VA. This Notice does not concern the paper search collection of registered marks that consist of or include design elements.

DATES:

Removal of the paper search collection of registered word-only marks shall be effected beginning sixty (60) days from the date of this Notice.

FOR FURTHER INFORMATION CONTACT:

Jennifer Chicoski, Office of the Commissioner for Trademarks, 571-272-8943.

SUPPLEMENTARY INFORMATION:

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 § 4804(d)(1) of the American Inventors Protection Act of 1999 (“AIPA”), Title IV, Subtitle B, of Pub. L. 106-113, 113 Stat. 1501, 1501A-589. 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 exclusively on the electronic search system since before 1990.

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. 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 sixty (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.

In a June 23, 2006, Federal Register Notice, the USPTO announced that it “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.” 71 FR 36065, 36067 (June 23, 2006). The Notice provided that “[b]ecause the USPTO will continue to maintain all existing word marks in non-electronic form, i.e., on microfilm, the certification requirements of AIPA § 4804(d)(2) are not applicable to such marks.” Id. The Notice further indicated that the USPTO would issue a notice sixty (60) days prior to the removal of the paper collection of registered word-only marks. Id.

Accordingly, the USPTO hereby gives notice that beginning sixty (60) days from the date of this Notice, the USPTO will begin removing the paper collection of active and expired trademark registrations that consist only of words. All papers will be microfilmed before being discarded, 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.

Dated: February 28, 2007.

Jon W. Dudas,

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