[Federal Register Volume 71, Number 121 (Friday, June 23, 2006)]
[Notices]
[Pages 36065-36068]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E6-9958]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-T-2006-0013]


Request for Comments on Removal of Paper Search Collection of 
Marks That Include Design Elements

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'') 
requests comments on a modified plan to remove the paper search 
collection of marks that include design elements from the USPTO's 
Trademark Search Facility and replace them with electronic documents. 
The USPTO has determined that the paper search collection is no longer 
necessary due to the availability and reliability of the USPTO's 
electronic search system.

DATES: Comments must be received by August 22, 2006 to ensure 
consideration. No public hearing will be held.

ADDRESSES: The Office prefers that comments be submitted by electronic 
mail message to [email protected]. Written comments may also 
be submitted by mail to the Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery to 
the Trademark Assistance Center, Concourse Level, James Madison 
Building, East Wing, 600 Dulany Street, Alexandria, Virginia, marked to 
the attention of Mary Hannon; or by electronic mail message via the 
Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site 
(http://www.regulations.gov) for additional instructions on providing 
comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection on the 
Office's Web site at http://www.uspto.gov and in the Office of the 
Commissioner for

[[Page 36066]]

Trademarks, Madison East, Tenth Floor, 600 Dulany Street, Alexandria, 
Virginia.

FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of the 
Commissioner for Trademarks, by telephone at (571) 272-9569.

SUPPLEMENTARY INFORMATION:

Background

    Under 35 U.S.C. 41(i), the USPTO must maintain a collection of 
United States trademark applications and registrations for use by the 
public in paper, microform, or electronic form. The provision 
authorizing an electronic search collection was added by section 
4804(d)(1) of the American Inventors Protection Act of 1999 (``AIPA''), 
Title IV, Subtitle B of Public Law 106-113, 113 Stat. 1501, 1501A-589. 
Section 4804(d)(2) of the AIPA provides that the USPTO can eliminate 
the paper or microform search collection only pursuant to notice and 
opportunity for public comment, and only after submitting a report to 
the Committees on the Judiciary of the Senate and the House of 
Representatives detailing its plan for removal, and certifying that the 
implementation of such plan will not negatively impact the public.
    The USPTO has previously provided opportunities for the public to 
comment on the proposed removal of USPTO's paper search records. See 
notices at 66 FR 45012 (August 27, 2001) and 67 FR 17055 (April 9, 
2002). A public hearing was held May 16, 2002. Comments were reviewed 
and analyzed, and a modified plan addressing the issues raised during 
the public comment period was developed.
    On July 24, 2002, the USPTO submitted a report to Congress 
detailing a plan for removal of a portion of its paper search 
collection. However, in response to allegations from the public that 
there were too many design coding errors in the USPTO's electronic 
system, the USPTO decided to temporarily retain the portion of the 
paper collection that includes design coding, and modified its plan 
accordingly. A report detailing the modified plan was submitted to 
Congress on May 7, 2003. On May 9, 2003, the USPTO certified to 
Congress that the USPTO could cease to maintain a paper search 
collection of marks that consist only of words, without harm to the 
public. The 2003 report and certification are currently available on 
the USPTO Web site at http://www.uspto.gov/web/offices/com/sol/comments/epubsearch/crtpapr.pdf.
    While the 2003 report and certification remain effective, the 
United States subsequently entered a stipulated settlement in National 
Intellectual Property Researchers Association, Inc. v. Rogan, Civ. A. 
No. 03-808-A. Among other terms, the settlement required that the USPTO 
continue to maintain its paper search collection through at least 
January 1, 2006, to publish a Federal Register notice 60 days prior to 
ceasing maintenance, and to create microform copies of all paper 
trademark registrations and expired trademark registrations prior to 
disposing of them.
    Since submission of the report to Congress, the USPTO has taken 
many additional steps to improve the quality and integrity of its 
electronic search system.

Existing Search Facilities

    The USPTO currently maintains a searchable database of registered 
marks and marks in pending applications. The public can access the 
database in the Public Search Facility on the premises of the USPTO and 
also on the USPTO Web site. The database available on the USPTO 
premises is called X-Search. On the Web site, the database is referred 
to as the Trademark Electronic Search System (``TESS''). TESS provides 
the same data and images as X-Search, and the data is updated according 
to the same schedule. TESS and X-Search contain text and images of all 
marks in live registrations and pending applications. They also include 
text and images of marks in abandoned, cancelled and expired records 
dating back to 1984. Government insignia protected by U.S. law or by 
Article 6ter of the Paris Convention, and insignia that 
various federally and state recognized Native American tribes have 
identified as their official tribal insignia, are also included. 
Trademark examining attorneys have relied exclusively on the electronic 
search system since before 1990, and public use of the electronic 
search system has increased substantially.
    Public Search Facility. The public can access X-Search in the 
Public Search Facility at the USPTO's main offices in Alexandria at 600 
Dulany Street, Alexandria, Virginia, James Madison Building--East Wing. 
Training is available. In addition, the public can view and print the 
contents of trademark application and registration files through the 
Trademark Image Capture and Retrieval System (``TICRS''), and can view 
and print Trademark Trial and Appeal Board (``TTAB'') proceeding files 
through TTABVUE. Status and prosecution history information is 
available through the Trademark Reporting and Monitoring (``TRAM'') 
System. Electronic searching of trademark assignment records is also 
available, as are microfilmed deeds, and indexes. All trademark 
registrations that expired or were cancelled prior to 1990 are 
available on microform.
    The USPTO maintains a separate search facility at 2900 Crystal 
Drive, Arlington, Virginia, which contains a paper collection of 
registration certificates for active and some expired registrations.
    Internet Searching. The public may also search text and images of 
registered marks and marks in pending and abandoned applications on the 
USPTO Web site at http://www.uspto.gov, using TESS. Trademark 
assignment records can be searched on-line through Assignments on the 
Web (``AOTW''), and status and prosecution history information can be 
obtained on-line through the Trademark Applications and Registrations 
Retrieval (``TARR'') database. In addition, the public can view and 
print the contents of trademark application and registration files 
through the Trademark Document Retrieval (``TDR'') portal, and can view 
and print TTAB proceeding files through TTABVUE. There is no charge for 
this information.

Discussion

    The USPTO has recently taken a number of steps to improve the 
quality and accuracy of its electronic search system.
    Pseudo-Marks. For some marks, the USPTO has added a pseudo-mark 
field to the electronic system to assist users in locating relevant 
marks. The pseudo-mark consists of spellings that are similar or 
phonetically equivalent to a word mark, or the literal equivalent to a 
pictorial representation of wording in a design mark. Pseudo-marks 
provide an additional search tool for locating marks that contain an 
intentionally altered spelling of a normal English word. X-Search and 
TESS also permit users to search other elements that cannot be searched 
in the paper files, such as filing date and owner name and address.
    Design Marks. In October of 2004, the Office issued an Official 
Gazette notice inviting the public to submit suggestions regarding the 
design codes and pseudo-marks entered into the USPTO database, in order 
to enhance the quality of the pseudo-mark data field and the design 
coding of images in TESS and X-Search. See Invitation to the Public to 
Submit Suggestions Regarding Database Design Codes and Pseudo-Marks 
(TMOG Oct. 19, 2004) on the USPTO Web site at http://www.uspto.gov/web/offices/com/sol/og/2004/week42/patsugg.htm. Between September 23, 2005, 
and November 9, 2005, the USPTO received 1792

[[Page 36067]]

suggestions for correction of design codes and pseudo-marks in pending 
applications and registrations. Changes were made in 1583 cases, and no 
changes were deemed appropriate in the other 209 cases.
    In October of 2005, the USPTO began sending out notices to every 
applicant whose mark has a design element, usually in the form of an e-
mail message to the applicant or its attorney. Each notice lists the 
design code(s) that have been applied to the mark, explains what the 
codes mean, and sets forth a phone number or e-mail box that the 
applicant can use to suggest corrections or additions to the design 
codes that the Office has applied. On April 4, 2006, the USPTO began 
sending notices to applicants whose marks have a pseudo-mark inviting 
them to correct or add to the pseudo-mark field. Thus, all applicants 
are given notice and may comment on how a mark is coded and/or what 
pseudo-mark should be applied. The USPTO regards this as an optimal 
quality check, since applicants have the strongest interest in assuring 
that the public can find their applications and registrations. The 
USPTO will continue to maintain and monitor these e-mail boxes for the 
use of the public.
    The Office has design coded approximately 25,723 applications 
between November 2, 2005, and April 26, 2006, and has received 
approximately 877 suggestions for corrections or additions to the 
coding for particular marks in its design code e-mail box. Design codes 
were added in 464 cases; and no changes were appropriate in the other 
413 cases.
    Employee Training and Quality Review. The USPTO administered an 
examination to its employees and government contractors to ascertain 
their proficiency in properly tagging data, applying design codes and 
creating pseudo-marks. Quality reviewers, selected on the basis of the 
proficiency exam, now review all data tags, pseudo-marks, and design 
codes before they are uploaded into the automated system. Monthly 
refresher training on design search codes, pseudo-marks and tagging is 
provided to employees, which is designed to address problem areas that 
are identified by the reviewers during the quality review process.

Proposed Changes

    Pursuant to AIPA Sec.  4804(d)(2), the USPTO is announcing a 
modified plan for removal of the paper search collection from the 
Trademark Search Facility.
    Word Marks. The electronic search system provides equivalent 
functionality to the paper files and superior storage, maintenance and 
efficiency features. For the reasons discussed in this notice and in 
the report to Congress dated May 7, 2003, the USPTO plans to remove the 
paper collection of active and expired trademark registrations that 
consist only of words. The USPTO has determined that a paper collection 
of registered word marks is no longer necessary, and has met the 
requirements of the AIPA with respect to their removal. All papers will 
be microfilmed prior to removal and the microform collection will be 
available to the public in the Public Search Facility at 600 Dulany 
Street, Alexandria, Virginia. This will ensure that all information 
currently available in the paper search collection remains available to 
the public. The USPTO expects to complete microfilming by March of 
2007. Once microfilming is complete, the USPTO will discard the paper 
collection of marks consisting only of words. The USPTO will issue a 
notice 60 days prior to removal. The microform collection will be 
equivalent to the existing paper collection. The USPTO believes that, 
even absent the microfilming project, removal of the paper collection 
will not negatively impact the public. Because the USPTO will continue 
to maintain all existing word marks in non-electronic form, i.e., on 
microfilm, the certification requirements of AIPA Sec.  4804(d)(2) are 
not applicable to such marks.
    Design Marks. Marks containing design elements are searchable by 
design codes. Currently, different coding systems are used for the 
paper and electronic search systems. The paper design classification 
system, in which design marks are organized by specific designations 
(such as ``trees,'' ``grotesque humans'' or ``circles''), is unique to 
the USPTO. The electronic system uses the International Classification 
of the Figurative Elements of Marks (``Vienna Classification''). The 
Vienna Classification is based on a multilateral treaty administered by 
the World Intellectual Property Organization. It is a numerical 
classification index that codifies figurative design elements into 
categories. Each design element in a specific section is assigned a 
six-digit number. Design marks are coded by identifying the significant 
design elements and assigning the appropriate codes. The design codes 
cover all of the possible designs that can be put into a trademark 
application and are used to search design marks.
    A Design Search Code Manual is available on the USPTO Web site at 
http://www.uspto.gov. This manual contains guidance describing elements 
that are included or excluded from specific codes, cross-references 
directing the user to related codes, and other explanatory notes and 
guidelines. The design code manual was recently upgraded to add images 
to each six digit design code, so that at least one example is now 
given for each of the six digit design codes. Further, the examples in 
the manual have been updated and improved. Also, the introduction and 
general guidelines were rewritten to make them clearer, and many new 
terms were added to the alphabetical index. The Office has a team 
working on additional improvements to the manual.
    To ensure greater accuracy and flexibility in searching designs, 
the USPTO is developing a new design code field to be added to TESS and 
X-Search, which will mirror the existing codes in the paper search 
files. The USPTO will also continue to apply the Vienna Classification 
System codes now used in TESS and X-Search to all design marks. Thus, 
the USPTO plans to create a redundant search system that will allow 
anyone using TESS or X-Search to use the Vienna Classification System, 
the design coding system now used in the paper search files, or both. 
While this new design coding system is being developed and tested, the 
USPTO will continue to add design code registrations to the paper 
search collection in the Arlington, Virginia paper search facility.
    Once the new coding system has been tested, the USPTO will: (1) 
Begin coding all design marks in incoming applications and new 
registrations using the new coding system; (2) stop adding design coded 
registrations to the paper search collection; and (3) begin 
microfilming the paper search collection of design marks. When 
microfilming is complete, the USPTO will discard the paper search 
collection of design marks.
    This plan will result in a highly reliable system that is far 
superior to the existing paper system. It will create a redundant 
search system that will be available to all members of the public, not 
just those on the premises of the USPTO. If a design coding error is 
made in one system, the design mark in a pending application or 
registration will be found in a search using the other coding system, 
since it is unlikely that the same error would be made in both systems.
    The new redundant design coding system will not be applied to the 
backfile, i.e., to applications filed or registrations issued before 
the date on which the system is implemented. However, all information 
now available about these applications and registrations in the paper 
search

[[Page 36068]]

collection will remain available to the public in microform in the 
Public Search Facility. Thus, all information currently available will 
remain available in non-electronic format.
    For the reasons discussed above, the USPTO believes that removal of 
the paper search collection of marks that include designs will not 
negatively impact the public. All existing paper records will remain 
available in microform. Design coding errors will be reduced through 
checking by applicants and internal training and quality review 
procedures. The creation of the on-line dual design coding system will 
benefit the public because it will be available to all members of the 
public through the Internet.
    Any interested member of the public is invited to provide comments 
on this modified plan to eliminate the trademark paper search 
collection of marks that includes design elements. Once all comments 
have been reviewed and addressed, and any necessary modifications have 
been made, the USPTO will submit another report to Congress detailing 
its plan. The paper collection of marks containing designs will not be 
removed until the USPTO has certified that the implementation of such 
plan will not negatively impact the public. An additional notice to the 
public will be issued 60 days prior to removal.

    Dated: June 15, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E6-9958 Filed 6-22-06; 8:45 am]
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