E6-9958. Request for Comments on Removal of Paper Search Collection of Marks That Include Design Elements

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (“USPTO”) requests comments on a modified plan to remove the paper search collection of marks that include design elements from the USPTO's Trademark Search Facility and replace them with electronic documents. The USPTO has determined that the paper search collection is no longer necessary due to the availability and reliability of the USPTO's electronic search system.

DATES:

Comments must be received by August 22, 2006 to ensure consideration. No public hearing will be held.

ADDRESSES:

The Office prefers that comments be submitted by electronic mail message to [e-mail]. Written comments may also be submitted by mail to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery to the Trademark Assistance Center, Concourse Level, James Madison Building, East Wing, 600 Dulany Street, Alexandria, Virginia, marked to the attention of Mary Hannon; 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 Office's Web site at http://www.uspto.gov and in the Office of the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia.

FOR FURTHER INFORMATION CONTACT:

Mary Hannon, Office of the Commissioner for Trademarks, by telephone at [phone].

SUPPLEMENTARY INFORMATION:

Background

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 section 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 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.

The USPTO has previously provided opportunities for the public to comment on the proposed removal of USPTO's paper search records. See notices at 66 FR 45012 (August 27, 2001) and 67 FR 17055 (April 9, 2002). A public hearing was held May 16, 2002. Comments were reviewed and analyzed, and a modified plan addressing the issues raised during the public comment period was developed.

On July 24, 2002, the USPTO submitted a report to Congress detailing a plan for removal of a portion of its paper search collection. However, in response to allegations from the public that there were too many design coding errors in the USPTO's electronic system, the USPTO decided to temporarily retain the portion of the paper collection that includes design coding, and modified its plan accordingly. A report detailing the modified plan was submitted to Congress on May 7, 2003. 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 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.

Since submission of the report to Congress, the USPTO has taken many additional steps to improve the quality and integrity of its electronic search system.

Existing Search Facilities

The USPTO currently maintains a searchable database of registered marks and marks in pending applications. The public can access the database in the Public Search Facility on the premises of the USPTO and also on the USPTO Web site. The database available on the USPTO premises is called X-Search. On the Web site, the database is referred to as the Trademark Electronic Search System (“TESS”). TESS provides the same data and images as X-Search, and the data is updated according to the same schedule. TESS and X-Search contain text and images of all marks in live registrations and pending applications. They also include 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 6^ter 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, and public use of the electronic search system has increased substantially.

Public Search Facility. The public can access X-Search in the Public Search Facility at the USPTO's main offices in Alexandria at 600 Dulany Street, Alexandria, Virginia, James Madison Building—East Wing. Training is available. In addition, the public can view and print the contents of trademark application and registration files through the Trademark Image Capture and Retrieval System (“TICRS”), and can view and print Trademark Trial and Appeal Board (“TTAB”) proceeding files through TTABVUE. Status and prosecution history information is available through the Trademark Reporting and Monitoring (“TRAM”) System. Electronic searching of trademark assignment records is also available, as are microfilmed deeds, and indexes. All trademark registrations that expired or were cancelled prior to 1990 are available on microform.

The USPTO maintains a separate search facility at 2900 Crystal Drive, Arlington, Virginia, which contains a paper collection of registration certificates for active and some expired registrations.

Internet Searching. The public may also search text and images of registered marks and marks in pending and abandoned applications on the USPTO Web site at http://www.uspto.gov, using TESS. Trademark assignment records can be searched on-line through Assignments on the Web (“AOTW”), and status and prosecution history information can be obtained on-line through the Trademark Applications and Registrations Retrieval (“TARR”) database. In addition, the public can view and print the contents of trademark application and registration files through the Trademark Document Retrieval (“TDR”) portal, and can view and print TTAB proceeding files through TTABVUE. There is no charge for this information.

Discussion

The USPTO has recently taken a number of steps to improve the quality and accuracy of its electronic search system.

Pseudo-Marks. For some marks, the USPTO has added a pseudo-mark field to the electronic system to assist users in locating relevant marks. The pseudo-mark consists of spellings that are similar or phonetically equivalent to a word mark, or the literal equivalent to a pictorial representation of wording in a design mark. Pseudo-marks provide an additional search tool for locating marks that contain an intentionally altered spelling of a normal English word. X-Search and TESS also permit users to search other elements that cannot be searched in the paper files, such as filing date and owner name and address.

Design Marks. In October of 2004, the Office issued an Official Gazette notice inviting the public to submit suggestions regarding the design codes and pseudo-marks entered into the USPTO database, in order to enhance the quality of the pseudo-mark data field and the design coding of images in TESS and X-Search. See Invitation to the Public to Submit Suggestions Regarding Database Design Codes and Pseudo-Marks (TMOG Oct. 19, 2004) on the USPTO Web site at http://www.uspto.gov/​web/​offices/​com/​sol/​og/​2004/​week42/​patsugg.htm. Between September 23, 2005, and November 9, 2005, the USPTO received 1792 suggestions for correction of design codes and pseudo-marks in pending applications and registrations. Changes were made in 1583 cases, and no changes were deemed appropriate in the other 209 cases.

In October of 2005, the USPTO began sending out notices to every applicant whose mark has a design element, usually in the form of an e-mail message to the applicant or its attorney. Each notice lists the design code(s) that have been applied to the mark, explains what the codes mean, and sets forth a phone number or e-mail box that the applicant can use to suggest corrections or additions to the design codes that the Office has applied. On April 4, 2006, the USPTO began sending notices to applicants whose marks have a pseudo-mark inviting them to correct or add to the pseudo-mark field. Thus, all applicants are given notice and may comment on how a mark is coded and/or what pseudo-mark should be applied. The USPTO regards this as an optimal quality check, since applicants have the strongest interest in assuring that the public can find their applications and registrations. The USPTO will continue to maintain and monitor these e-mail boxes for the use of the public.

The Office has design coded approximately 25,723 applications between November 2, 2005, and April 26, 2006, and has received approximately 877 suggestions for corrections or additions to the coding for particular marks in its design code e-mail box. Design codes were added in 464 cases; and no changes were appropriate in the other 413 cases.

Employee Training and Quality Review. The USPTO administered an examination to its employees and government contractors to ascertain their proficiency in properly tagging data, applying design codes and creating pseudo-marks. Quality reviewers, selected on the basis of the proficiency exam, now review all data tags, pseudo-marks, and design codes before they are uploaded into the automated system. Monthly refresher training on design search codes, pseudo-marks and tagging is provided to employees, which is designed to address problem areas that are identified by the reviewers during the quality review process.

Proposed Changes

Pursuant to AIPA § 4804(d)(2), the USPTO is announcing a modified plan for removal of the paper search collection from the Trademark Search Facility.

Word Marks. The electronic search system provides equivalent functionality to the paper files and superior storage, maintenance and efficiency features. For the reasons discussed in this notice and in the report to Congress dated May 7, 2003, the USPTO plans to remove the paper collection of active and expired trademark registrations that consist only of words. The USPTO 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. This will ensure that all information currently available in the paper search collection remains available to the public. The USPTO expects to complete microfilming by March of 2007. Once microfilming is complete, the USPTO will discard the paper collection of marks consisting only of words. The USPTO will issue a notice 60 days prior to removal. The microform collection will be equivalent to the existing paper collection. The USPTO believes that, even absent the microfilming project, removal of the paper collection will not negatively impact the public. Because 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.

Design Marks. Marks containing design elements are searchable by design codes. Currently, different coding systems are used for the paper and electronic search systems. The paper design classification system, in which design marks are organized by specific designations (such as “trees,” “grotesque humans” or “circles”), is unique to the USPTO. The electronic system uses the International Classification of the Figurative Elements of Marks (“Vienna Classification”). The Vienna Classification is based on 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 of the possible designs that can be put into a trademark application and are used to search design marks.

A Design Search Code Manual is available on the USPTO Web site at http://www.uspto.gov. This manual contains guidance describing elements that are included or excluded from specific codes, cross-references directing the user to related codes, and other explanatory notes and guidelines. The design code manual was recently upgraded to add images to each six digit design code, so that at least one example is now given for each of the six digit design codes. Further, the examples in the manual have been updated and improved. Also, the introduction and general guidelines were rewritten to make them clearer, and many new terms were added to the alphabetical index. The Office has a team working on additional improvements to the manual.

To ensure greater accuracy and flexibility in searching designs, the USPTO is developing a new design code field to be added to TESS and X-Search, which will mirror the existing codes in the paper search files. The USPTO will also continue to apply the Vienna Classification System codes now used in TESS and X-Search to all design marks. Thus, the USPTO plans to create a redundant search system that will allow anyone using TESS or X-Search to use the Vienna Classification System, the design coding system now used in the paper search files, or both. While this new design coding system is being developed and tested, the USPTO will continue to add design code registrations to the paper search collection in the Arlington, Virginia paper search facility.

Once the new coding system has been tested, the USPTO will: (1) Begin coding all design marks in incoming applications and new registrations using the new coding system; (2) stop adding design coded registrations to the paper search collection; and (3) begin microfilming the paper search collection of design marks. When microfilming is complete, the USPTO will discard the paper search collection of design marks.

This plan will result in a highly reliable system that is far superior to the existing paper system. It will create a redundant search system that will be available to all members of the public, not just those on the premises of the USPTO. If a design coding error is made in one system, the design mark in a pending application or registration will be found in a search using the other coding system, since it is unlikely that the same error would be made in both systems.

The new redundant design coding system will not be applied to the backfile, i.e., to applications filed or registrations issued before the date on which the system is implemented. However, all information now available about these applications and registrations in the paper search collection will remain available to the public in microform in the Public Search Facility. Thus, all information currently available will remain available in non-electronic format.

For the reasons discussed above, the USPTO believes that removal of the paper search collection of marks that include designs will not negatively impact the public. All existing paper records will remain available in microform. Design coding errors will be reduced through checking by applicants and internal training and quality review procedures. The creation of the on-line dual design coding system will benefit the public because it will be available to all members of the public through the Internet.

Any interested member of the public is invited to provide comments on this modified plan to eliminate the trademark paper search collection of marks that includes design elements. Once all comments have been reviewed and addressed, and any necessary modifications have been made, the USPTO will submit another report to Congress detailing its plan. The paper collection of marks containing designs will not be removed until the USPTO has certified that the implementation of such plan will not negatively impact the public. An additional notice to the public will be issued 60 days prior to removal.

Dated: June 15, 2006.

Jon W. Dudas,

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