A year at the USPTO – the outgoing commissioner for trademarks' perspective

In a time of unprecedented growth and change, the USPTO trademarks group has met its pendency and quality goals for the 13th year in a row. The trademarks organisation is an impressive team of smart, passionate and dedicated public servants, which it has been my privilege to lead as commissioner for the past five years.

This past fiscal year was particularly productive as we raised the bar even higher with respect to efficiency and quality. We are fully engaged in modernising our aging legacy IT systems, making way for the next generation of technology and tools. Electronic filing, which has a proven positive effect, became mandatory as of 21 December. We have also implemented several initiatives aimed at decluttering the federal trademark register, protecting its integrity and safeguarding information, and have taken crucial steps this year towards securing our financial future. Ultimately, we have placed the customer experience at the centre of all that we do.

The customer experience

The trademarks department continues to lead the agency in enhancing the customer experience. This year the team pushed for a Voice of the Customer programme. Four new customer surveys gave us insight into mission-critical touchpoints and the first-ever persistent, long-term survey will measure customer sentiment regarding office actions. This data gives us direct customer feedback on  topics such as office action clarity, helpfulness of examining attorneys, overall satisfaction and the effectiveness of our template information. Additional questions highlight trends and differences in sentiment between IP professionals and pro se applicants.

This in turn allows us to target improvements and measure our progress. Collecting and leveraging data from these sources has better positioned the business unit to put customer-focus at the forefront of its strategy and decision making. To further support a positive customer experience, we:

• hired website communication strategists and plain-language writers to overhaul our digital front door in order to provide customers, especially small businesses and entrepreneurs, with information that is easy to find, understand and use;
• partnered with the USPTO’s regional offices to expand their trademark-related services to the public to include trademark search and filing capabilities, as well as facilities for hosting and video conferencing TTAB hearings, and providing employees at these offices with increased trademark-focused training;
• launched the agency’s first mobile app in May 2019, allowing users to establish a direct account with the USPTO and quickly check the status of any mark in our database – the user can set up the app to provide push notifications when the status of an application changes and, by entering the registration number, can immediately link to the Trademark System of Data Retrieval, where they have access to all the system’s features; and
• developed a shortened trademark application form – this was initially developed for the approximately 39% of our applicants who are pro se; however, we now anticipate that it will be widely used by attorneys as well. The form has been well received in beta testing, so we plan to launch it to the public in fiscal year 2020. It will be the first to use the MyUSPTO landing page as its starting point and will allow for greater use of role-based protections and operations.

Improper filing behaviours

In fiscal year 2019 the office made significant efforts to slow down fraudulent activities. As such, we have identified and addressed the following serious challenges:

• doctored and digitally created specimens of use;
• false claims of use in commerce;
• unauthorised changes to the files of others;
• misappropriation of US attorneys’ names and bar information;
• unauthorised foreign practitioners posing as pro se applicants; and
• third-party solicitations designed to appear as official USPTO correspondence (eg, the US Trademark Agency).

For 149 years, the trademarks organisation has had a system based on openness and good faith. However, this is now being abused, prompting us to adopt policies to protect the agency and its customers from improper actions. These include the following initiatives:

• US Counsel Rule – from 3 August 2019 all foreign-domiciled trademark applicants, registrants and parties to TTAB proceedings must be represented before the USPTO by a US licensed attorney. This rule helps to ensure effective use of available mechanisms to enforce foreign user compliance with our statutory and regulatory requirements. It is a major change in practice requiring extensive coordination within the USPTO, with other government agencies and with the bar.
• Proof of Use Audit Programme – this programme supports the USPTO’s efforts to declutter the federal trademark register and curb inaccurate filings and registrations by requiring registrants to show current use in commerce or delete goods and services no longer in use. Since the audit programme became permanent in 2017, the size of the programme workforce has increased significantly to enable the office to audit more than 5,000 registrations per year.
• Mandatory login – this requirement enhances data security and is being implemented in three phases. The first phase, effective 26 October 2019, required users to log in to their uspto.gov account with a two-step authentication to access the Trademark Electronic Application System forms – this was to protect filing records from unauthorised third-party interference. Future implementation will help to verify account holder information and allow more control and delegation of access to forms. The second phase, due to begin in 2020, will require the user to authenticate their identity. The final phase, scheduled for the fourth quarter of fiscal year 2020, will enable role-based access to accounts.
• Special taskforce on improper behaviours – we have established a special taskforce to identify improper activity and to develop and implement policies, procedures and technology solutions to effectively combat such behaviours.
• Training and education – we have trained examining attorneys and employees on how to detect and refuse fake specimens. We are also educating applicants, registrants and their representatives on US use in commerce requirements and the US rules that require them to confirm the accuracy of their submissions to the USPTO. Finally, we issue trademark alerts to our users, notifying them of improper behaviour.
• Interagency cooperation – we are working with the USPTO’s Office of Policy and International Affairs and the Office of General Counsel on possible disciplinary actions by the Office of Enrollment and Discipline, as well as possible legislative solutions.
• External cooperation – two USPTO attorneys are currently on assignment at the Criminal Fraud Division of the Department of Justice (DOJ), working alongside personnel from the US Postal Inspection Service and the DOJ to investigate misleading or fraudulent solicitations. The USPTO also participates in an interagency programme headed by the Department of Homeland Security’s National Intellectual Property Coordination Centre, which it works with on education and outreach to increase information sharing in public and private sectors, in order to combat the illegal import and distribution of counterfeit, sub-standard and tainted goods.

The full version of this article – including details on new examination guides and the USPTO’s operating reserve and fees – will be published in the Winter edition of World Trademark Review.