PTO Statistics for 2008

8/14/2019 PTO Statistics for 2008

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Meryl Hershkowitz

Trademark Group DirectorMarch 10, 2009


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Trademark Updates

Statistics Whats New in

Policy andProcedure

Latest TTAB Casesand Pending Casesat the FederalCircuit

Petition Practice inlight ofMedinol


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Examination Statistics

Filing, production, quality and otherexamination matters


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FY 2009 Trademark Performance Measures Quarter 1 FY 2008Results

FY 2009

TargetsFY 2009

Qtr. 1 ResultsFY 2009

Variance

QUALITY

Improve examination quality of Trademarks as indicated by the compliance rate determined through anin-process review evaluation of the statutory bases for which the Office raises issues and or refuses

marks for registration based on the first office action and the examiners approval or denial of theapplication[1]:

First Office Action:

95.8%Final Action:

97.2 %


95.5%Final:

96%


96.4%Final:

97.5%

+.94%

+.52%

E-GOV

Increase the use of electronic filing and processing as measured by the percent of applications for theregistration of a trademark that are processed electronically[2].

62% 60.2% -2.9%

APPLICATION FILINGS Classes

Increase/Decrease from the prior year401,392

1.8%390,000

-2.8%89,137

-10.7%-2.2%

Examiner PRODUCTION

Initial Exam First ActionsExaminer Disposals abandonments and approval for publication

Examiner Balanced Disposals first actions plus disposals

415,896

437,315853,211

390,000

413,000803,000

108,993

106,976215,969

+18.2%

+9.2%+13.5%

Examiner FTE 382.2 380 98.95 4.2%

Productivity Balanced Disposals per Examiner FTE 2,232 2,113 2,183 +2.3%

Productivity Balanced Disposals per Examiner FTE including comp/credit hours 2,192 2,058 2,166 +5.2%

Office Disposals abandonments and registrations

Registrations

430,343

274,250

358,100

226,000

101,570

60,232

+13.5%

+6.6%

PENDENCY

First action pendency from date of filing to first office action in months.3.0 2.5 3.5 2.8 On target

PENDENCY

Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonmentincluding suspended and inter partes proceedings.

13.9 16.0 14.3 -10.6%

PENDENCY

Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonmentexcluding suspended and inter partes proceedings.

11.8 13.5 12.0 -11.1%

EFFICIENCY

Improve the efficiency of the trademark process as measured by the average cost of a trademark disposalcompared to trademark direct and indirect costs. Actual results are based on total trademark related

expenditures compared to office disposals.

$470 $632 $474 -25%

FY 2008 2009 Performance


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Quality

Goal: Improve examination quality asmeasured by compliance rates The compliance rate is measure of the percent of

actions that have been determined to have nodeficiencies or errors

2008 Results First Action Compliance: 95.8% Final Action Compliance: 97.2%We will be changing the universe of files considered

for our final action compliance rate this year.


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Quality

Quality of Trademark Examination FY 2009 Compliance Rate


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Pendency - 2009

Target for first action pendency is between 2.5 and 3.5 months First action pendency at the end of fiscal year was 3.0 months Disposal pendency was 11.8 months for applications without

inter partes or suspensions and 13.9 months for applicationsincluding suspended and inter partes cases at end of FY08

In FY09 the target for first action pendency will be 2.5 3.5months and the target for disposal pendency will be to keep the

pendency for cases that include inter partes and suspendedcases will be 13 months


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First Action Pendency

FY08 monthly pendency distribution months from filing to first office action


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E-Government

Goal: Increase the percentage of applicationsfiled electronically

FY 07 95.4% of applications filed via TEAS FY 08 Target: 95% FY 08 results: 96.9% 2009 electronic measure - percent of

disposals that are handled by electronic filingand processing (currently 51%)


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E-government

Disposal pendency by types of filings FY 2008:


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First Action Approvals for Pub


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Application Filings

394,368 application classes were filed in FY 07 an 11.2% increase over FY 06

401,392 applications filed in FY08 a 1.8%increase over FY 07

Application filings expected in FY09 363,000 classes -10.0% compared to FY08


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Applications have increased at about 7% per year for the past 10 years.

Historical Application Filing


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Filing Levels/Historic Events


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Examining Attorney Production

Based on balanced disposals (1st actions,approvals, abandonments).

Target is number of BDs we estimate to benecessary to maintain first action pendencybetween 2.5 and 3.5 months

FY 2007 BDs: 900,808 FY 08 BDs : 853,211 FY 09 target: 772,000

Declining numbers represent lower filings and asmaller staffbut maintaining 3 month pendency


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Examining Attorney Staffing

FY 2007 401 FTE (Full Time Equivalent)Examining Attorneys

FY 08 examining attorney FTE was 382.2 FY 09 examining attorney FTE target is 380.


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Telework

The USPTO Trademark telework program has beenrecognized as a success throughout the federalgovernment.

The Agency celebrated the 10th anniversary of thisprogram in 2007 85% of eligible trademark examining attorneys now

work from home nearly full time 52% of all Trademark employees work from home at

least part of their work week. In 2008, the Trademark Assistance Center was

recognized with the Tele-Vision award as the firstfederal call center with a very successful work-at-home program


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2009 Challenges

Managing in the turbulent economy Organizational Assessments

Streamline processes Increase efficiency Eliminate unnecessary steps

Improve Quality New form paragraph system Training and guidelines excellent first action process

Expand electronic workflow


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-Publication and Issue Statistics

More than 50% of the marks being approvedfor publication have 6 month or less

pendency More than 5% of the marks being registered

have less than 7 month pendency

Paris Convention issues? The process is getting faster and that trend is

expected to continue


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Database Information

1,525,871 registered marks in TESS (2/18) 5,046,610 application records in the TESS 449,644 pending applications One year of the Official Gazette is now on the

website

TDRscanning is almost complete! Less than 15,000 registration files have not been

scanned into TDR


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E-registration

Proposal to eliminate automatic issuance of apaper registration certificate

USPTO will send a your registration hasissued notice

Option to purchase a simple paper copy Option to purchase a certified status and title

record

On hold technical difficulties


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Proposed Format - Revised Certificate


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Letters of Protest

New standard if LOP filed before publicationin Official Gazette (Exam Guide 4-08)

Office will grant LOP filed before publicationin all cases where the evidence is relevantand supports any reasonable ground forrefusal in ex parte examination

Examining Attorney required to considerevidence, but not required to issue refusal

No change in standard after publication:clear error


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Consistency Initiative

The Office now allows applicants to requestreview of certain inconsistencies in

examination through a new e-mail box:[email protected]


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Tagging Official Correspondence

Each of the pre-written paragraphs (formparagraphs) used to compose official

examination correspondence are nowelectronically tagged

Tagging will allow data collection regarding: Frequency of issuing specific refusals and

requirements Identification of examination issues where

additional training would improve quality


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C.F.R. Rules

All pending rules are temporarily on holdeven the non-controversial signature rules

Miscellaneous rules changes were effectiveJanuary 16, 2009 Summary on USPTO website


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Miscellaneous Rules Changes

Section 44 and 66(a) applications notsubject to concurrent use. Rules 2.73 and

2.99(g) Applicants may not reinsert goods or services

omitted from a paper SOU. Rule 2.88(i)(2)

Post Registration - Conforming amendmentsto disclaimer, description of the mark, ormiscellaneous statement may be requiredwhen an owner files a request to amend aregistration under 7. Rules 2.173(f) and (g)


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Recent TTAB Cases

Section 2(a)

In re Heeb Media, LLC, 89 USPQ2d 1071 (TTAB2008

Descriptiveness - Section 2(e)(1)

In re Leonhardt, ___ USPQ2d ___, Serial No.78666879 (TTAB November 13, 2008)

In re BetaBatt, Inc., 89 USPQ2d 1152 (TTAB 2008)Ownership of Marks Implied License Ballet Tech Foundation, Inc. v. The Joyce Theater

Foundation, Inc., ____USPQ2d ____ Oppos. No.91180789, Canc. No. 92042019 (TTAB December11, 2008)


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Pending Federal Circuit Appeals

MOSKOVSAYA 2(a) and 2(e)(3) case 74-382759 BOSE fraud case.91-157315

COCAINE 2(a) scandalous case (77-062212) SHINNECOCK 2a false connection cases

(78-918061 and 78-918500)

ONE NATION UNDER GOD website specimen case(78-717427)

IN RE ELECTRO BAND 2d likelihood of confusion(77-038241)


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Medinol updates

BOSE fraud case.91-157315 At the CAFC Office requested to be substituted for the opposer Issue is Boses claim of use of the mark on audio

cassette players and tape recorders in its affidavitof continued use

G&W Laboratories, Inc v. G W PharmaLimited 01/29/09 pro#91169571


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Petitions to the Director

Applicants, registrants, and parties to inter partesproceedings before the TTAB

who believe they have been injured by certain adverseactions of the USPTO, or

who believe that they cannot comply with the requirementsof the Trademark Rules of Practice (37 C.F.R. Part 2)because of an extraordinary situation

may seek equitable relief by filing a petition under 37

C.F.R. 2.146.


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Medinoland Petitions to theDirector

Since Medinolandmore recent TTAB cases on fraud, there hasbeen a steady increase in requests from outside attorneys to:

Withdraw inadvertently filed documents and/or rescind prioracceptance or acknowledgement of Section 8 affidavits ofcontinued use and Section 15 affidavits of incontestability

Submit clarifying information or make information of record Amend the basis of an application from 1(a) to 1(b) post

publication


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Requests to Withdraw/Rescind

We instruct customers that requests towithdraw/rescind are only handled on petition

$100 petition fee is required Generally, we do not remove any documentsfrom Office records (duty to preserveintegrity). We may remove or redactconfidential information not relied on during

examination. We generally agree not to examine a

previouslyfiled document.


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Requests to Withdraw/Rescind

We have refused to rescind prior acceptance of aSection 8 affidavit or grant of Section 9 renewalapplication

Registrant may submit corrective filings (these arenot examined), delete certain goods/services from theregistration or surrender the registration

We have agreed to update Office records toabandon a Section 15 affidavit of incontestability

even after acknowledgement by the Office(discretionary filing)

No refund of associated filing fee


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Petitions to Amend Basis

Post publication amendments to basis onlyconsidered after a petition to the Director is granted

Petitions granted when it is too late to withdrawapplication from publication and all of the goods areamended from 1(a) to 1(b) or a request to divide isfiled

$100 petition fee Application returned to examination to consider

amendment


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Petitions

If an applicant or attorney requests removal of adocument or information from the Official

record Petition required in most cases Direct them to the staff attorney on duty in the

Petitions Office (571) 272-8950


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Thank You

Questions? [email protected] www.uspto.gov

PTO Statistics for 2008

Documents

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