My Holiday Wish List from the Uspto

• Jurisdiction: United States,Federal
• Citation: Vol. 46 No. 4
• Publication year: 2021
• Author: John R. Sommer
• topic: Trademark,Intellectual Property

MY HOLIDAY WISH LIST FROM THE USPTO

John R. Sommer¹
Stussy, Inc.

With the impending holidays, we often give hints to our family and friends about what we would like or need. These are my wishes from the U.S. Patent and Trademark Office (PTO), to make it even better.

1. TESS Structured Search

Change the default operator for a Trademark Electronic Search System (TESS²) Structured Search to AND. Currently, the default operator is OR. I have never used OR, and I do not know anyone who has. If one forgets to change to AND, the results usually are fantastically large.

2. Update the Expected Processing Time on TESS

TESS continues to report that "[n]ew application will be assigned to an examining attorney approximately 3 months after filing date." As of the writing of this article, the time from filing to assignment to an examining attorney is six months. Presumably it is extremely easy to update TESS to show the actual processing time.

3. Notify the Applicant When the Application is Approved

If the examining attorney approves an application without issuing an office action, or after reviewing a response to an office action, no notice is sent to the Applicant. The only way the applicant will know is by checking Trademark Status & Document Retrieval (TSDR³), or if the notice of publication is issued. It would be nice to receive an email notification of such approval.

4. Stop Issuing Paper Certificates

A number of countries are issuing only electronic certificates. In my practice, I have no use for paper certificates. In fact, I ask my foreign associates to keep the paper certificates since they are of no use. In only a few countries (Nepal, Taiwan, Vietnam) is the certificate needed in order to renew the registration.

5. Stop Using U.S. Classes

The last registration issued prior to the adoption of the Nice Classification in the United States was BODY PERM, 096728, registered August 28, 1973. Maybe for a transition period it was worth putting the U.S. Class numbers on registrations. After nearly a half century, however, there is no point in putting U.S. Class numbers on new registrations. Enough inertia.

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6. Update the Madrid Pre-Populated Form for Multiple Applications and Allow Immediate Filing

When applying for a Madrid registration, it is far better to use the Pre-Populated Form. It is too easy to make a mistake such as omit a letter when copying and pasting the identification. Currently, the PTO website allows a pre-populated Madrid application that automatically draws the data directly from the PTO database. When the data is automatically transferred, there is no possibility of mistakes. Even better, the Madrid application is auto-certified, usually within hours.

However, the form currently allows only one base application or registration. If one wishes to base a Madrid application on more than one application or registration, the data must be manually inputted. As the author knows from experience, it is far too easy to make a mistake and the Madrid Processing Unit will be required to deny certification.

A related issue is that the pre-populated Madrid application form cannot be used until an application appears in TESS. There is a black-out period following the application submission, during which the new application data is not available on TESS. The reason for the black-out period is to give the applicant time to file for the same trademark in other countries before potential squatters can learn of the application. One presumes, for example, that any time Apple files a new trademark application, squatters in first-to-file countries would love to beat Apple to the filing window. However, the Madrid Pre-Populated Form cannot be used until the new application is available on TESS. Given that TEAS requires a log-in, there should be no reason why the applicant's counsel cannot be given access to the TESS data immediately after filing, so that a pre-populated Madrid application can be filed.

7. Focus Audit Program on Most Likely Registrations

The PTO has a laudable program to audit claims of use in commerce. However, it appears to randomly select any registration with more than four goods in the identification.

A more efficient approach would be to audit registrations starting with those with the largest number of items in the identification. The PTO could audit all applications with more than 500 items in the identification, then those with more than 200, then those with more than 100.

There is nothing wrong with prioritizing applications based upon objective criteria, as compared to random audits. In fact, that is the sensible approach. Do tax auditors randomly select returns to audit, or do they focus on cash-intensive businesses? Do Fish & Game agents drive randomly through cities and farmland? Or do they patrol riverbanks and the edge of the forest where poachers are likely to be found? Driving the wrong way on the freeway should be the enforcement priority over a rolling stop at a stop sign. Fairness is not the same as randomness. Rather than randomly selecting registrations to audit, the PTO should audit all registrations with more than 500 items.

You say, how is it possible that there are more than 500 items in an identification? Let us look at an example: MOGAO CAVES. The registration in Class 5 has 884 separate items.⁴ The mark is also registered in Classes 09, 18 and 25 for hundreds of other goods; all are allegedly used in United States commerce. Can anyone really believe that so many different types of products...