By Adam Smith
December 01 2009
The new director of the United States Patent and Trademark Office (USPTO) recognized recently that his agency's online trademark function needed development. "I’m going to make it a top priority to listen to comments and feedback on how we can improve the system," David Kappos explained, adding that he has already launched a number of projects to modernize this part of the USPTO's operation (see "USPTO director applauds 'positive' fraud U-turn"). "Our goal is to allow practitioners to keep dockets online and for them to have real-time access to applications and registration files, and to receive reminders and updates." These tools are still a way off, but the USPTO is already making headway with web development: last month, it launched a newly redesigned website. The reception of users, according to Commissioner of Trademarks Lynne Beresford, has been "generally positive".
Developments may be underway, but the USPTO's underlying trademark database still has many holes: it cannot search pre-1932 and it is not entirely comprehensible to any but the experienced and trained trademark lawyer. When asked by WTR recently whether the USPTO planned to optimize the search, Beresford said that "folks seem to be happy with it". However, she recognized that "maybe we should be seeking comment on it. If there are functionalities in the system that people want to see, we'll have a look at them."
Beresford and colleagues will need to hop to it. Private sector web innovation is at an all-time high, making new online advancements daily, from Twitter to Hulu. And now the web developers have their eyes on the USPTO's database. IP attorney Raj Abhyanker this year launched Trademarkia, which claims on its website to be "the largest and most accurate free search engine for US federally registered trademarks on the Internet". The site allows users to search a wider set of USPTO data than the agency itself offers. It also has a more accessible interface, allowing users to screen for generic or confusingly similar marks and file a trademark registration. "I built the site to try to make the data more accessible to people," Abhyanker told WTR. The site is fed by old USPTO data (released after a Freedom of Information Act petition) and daily xml updates. "We wanted to make it a larger database than what the USPTO offers as a free public search and to make it completely free for mass consumers."
Trademarkia's principal sales gimmick tells users that they will be able to revive abandoned and dead marks for their own purposes. (History shows that dead marks can become valuable: in the 1960s, a company selling sunglasses traded under, then abandoned, the mark GOOGLE.) Abhyanker is sure that 95% of abandoned or dead marks are no longer used and are truly abandoned, but he acknowledges that 5% may still have value or common law rights. "We've tried to identify in the database marks from the top 100 brands and manually override them as being not available," he says.
However, WTR found countless marks of famous brands, from Bank of America to Disney. "There are still so many other famous marks that we haven't screened," Abhyanker acknowledges. "But if someone tried to file one we would do a secondary check and, if we decide not to file, we'll give the user a refund and then flag it on our system not to file."
Nevertheless, Trademarkia has filed over 300 marks in its first two months (for every one filed, 15 have been turned away). It is unclear how many will actually be registered, but Martin Schwimmer, a partner at Moses & Singer and author of the Trademark Blog, says the level of traffic itself means the site is worth watching: "Anyone who ignores the amount of traffic it has generated is ignoring a market reality that is important for all of us to be paying attention to." Anne Gundelfinger, former president of the International Trademark Association (INTA) and former vice president and associate general counsel at Intel, agrees that the business potential is notable, but adds: "I think it's a very interesting concept but it is still very early days. The site still needs a fair amount of work and refinement."
Abhyanker is seeking to widen the value of the service by building new tools into the site, including a number of services that will be of interest to large corporations with in-house legal teams. By next summer, he claims, Trademarkia will offer an online trademark portfolio manager, which will include a watch service on competitors' marks, web content and domains, and automated opposition and extension to opposition filing. The website will also be extended across the Atlantic to encompass the Community trademark (CTM) database. In Europe, Portuguese firm Gastão Da Cunha Ferreira will be handling the CTM applications that come through the system. José Amorim, a partner at the firm, explains: "We have acquired the Office for Harmonization in the Internal Market's database but we have a lot of work ahead of us still."
Ultimately, Trademarkia aims to offer a global, publicly available trademark database. To achieve this, though, the website certainly has its work cut out: the provision of national databases around the world is very limited. A number of EU jurisdictions still do not have online databases. Japan's was withdrawn. And in China, according to Steve Dickinson, a partner at Harris & Moure in China: "The last time I checked, there was still no functioning system. Promises, but no results." WTR left a number of phone messages for the World Intellectual Property Organization to inquire about the availability to trademark databases around the world but they were not returned.
It is apparent that Trademarkia is gearing up for global coverage, but can it stay ahead of the game in its home market? The USPTO is already discussing how to move its "trademark organization into the 21st century", according to Beresford. It is consulting with the Trademark Public Advisory Committee on how it should implement trademark automation and will soon begin opening up the discussion to the public.
The USPTO kick-started the revolution by launching its database online nearly a decade ago. And now, if there is money to be made from increasingly IP-savvy businesses, not to mention big brand owners who demand better functionality and a higher level of sophistication, the private sector may well open up an innovation race. Whoever comes out the winner, the trademark industry should benefit.
Adam Smith, World Trademark Review, London
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