2011-24466. 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 [e-mail]. 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 [phone], 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 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 “[e-mail]” 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.

Dated: September 19, 2011.

David J. Kappos,

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