[Federal Register Volume 72, Number 124 (Thursday, June 28, 2007)]
[Notices]
[Pages 35429-35432]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E7-12498]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-T-2007-0020]


Notice of the Removal of the Paper Search Collection of 
Registered Marks That Include Design Elements from Trademark Search 
Library in Arlington, VA

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'') 
hereby provides notice of the microfilming and removal of the paper 
search collection of trademark registrations that include design 
elements from the USPTO's Trademark Search Facility in Arlington, 
Virginia.

DATES: Removal of the paper search collection of trademark 
registrations that include design elements shall be effected beginning 
no sooner than sixty (60) days from the date of this Notice.

FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the 
Commissioner for Trademarks, 571-272-8742.

SUPPLEMENTARY INFORMATION:

Background

    Under 35 U.S.C. 41(i), the USPTO must maintain a collection of 
United States trademark registrations for use by the public in paper, 
microform, or electronic form. No such obligation exists with regard to 
trademark application files. The provision authorizing an electronic 
search collection of registered marks 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 requires that the USPTO not cease to maintain 
for use by the public its paper or microform collections of, inter 
alia, United States trademark registrations, except pursuant to notice 
and opportunity for public comment, and except where the USPTO Director 
has first submitted a report to the Committees of the Judiciary of the 
Senate and the House of Representatives detailing a plan to do so. The 
report must certify that the implementation of the plan will not 
negatively impact the public, and must include a ``description of the 
mechanisms in place to ensure the integrity of such collections and the 
data contained therein, as well as to ensure prompt public access to 
the most current available information.'' Id. By letters dated June 7, 
2007, the USPTO submitted the requisite certification and report 
concerning its paper search collection of trademarks including design 
elements. The report and certification are currently available on the 
USPTO Web site at http://www.uspto.gov/main/newsandnotices.htm and 
http://www.uspto.gov/web/trademarks/reports/reportcongress20070604.htm.
    The USPTO currently maintains a searchable electronic database of 
registered marks and marks in pending applications, as well as 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 database since before 1990. The 
database available on the USPTO premises is called X-Search, and is 
accessible to the public at the USPTO's Public Search Facility in 
Alexandria, Virginia. On the USPTO Web site, the database is referred 
to as the Trademark Electronic Search System (``TESS'').
    Marks that include design elements are searchable by design codes. 
A different design coding system is used with the electronic search 
systems than has been used with the paper collection of trademark 
registrations. The paper design coding system organizes design marks 
according to specific designations (such as ``trees,'' ``grotesque 
humans'' or ``circles''). Since 2001, these paper search designations 
(``PSD'') have been used to code registrations, but have not been used 
to code pending applications.
    The electronic design coding system is based on the International 
Classification of the Figurative Elements of Marks (``Vienna 
Classification''). The Vienna Classification arises out of 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 the possible designs that 
can appear in a trademark, and are used to search design marks. The 
Vienna Classification codes are applied to incoming applications and 
have been assigned to existing registrations.

[[Page 35430]]

    The USPTO provides a Design Search Code Manual on its Web site, 
which contains guidance about the scope of the specific codes of the 
Vienna Classification, cross-references directing the user to related 
codes, and other explanatory notes and guidelines. The USPTO has 
recently made significant enhancements to the Design Search Code 
Manual, including adding new design codes to refine searchability, 
identifying and re-coding all the current applications or registrations 
affected by the new design codes, and increasing and improving the 
examples given for the numerical design codes.
    In response to previous USPTO proposals to eliminate its paper 
search collection of registered marks that include design elements, 
some members of the public expressed the view that the ability to 
search both the paper collection and the electronic database provides 
better, more accurate search results, because if a design coding error 
is made under the Vienna Classification, the design mark is likely to 
be found by a paper search using the PSD. The USPTO considered this 
concern and developed a plan to address it.
    In a June 23, 2006, Federal Register Notice (71 FR 36065), the 
USPTO requested comments on its plan to remove the paper search 
collection of registered marks that include design elements from the 
USPTO's search facility in Arlington, Virginia, and replace the 
collection with an enhanced electronic search system and a microform 
collection of the paper search collection. The Notice announced the 
USPTO's plan to develop a new design code field for its TESS and X-
Search databases, which will mirror the PSD. Under the announced plan, 
while the USPTO will maintain the Vienna Classification now used in 
TESS and X-Search, the USPTO will also code new registrations according 
to the PSD. This dual coding will permit electronic searching of 
registered design marks using the Vienna Classification, the PSD, or 
both. The Notice further stated the USPTO's plan that, upon completion 
of the development of the new design code system, the USPTO would 
microfilm the existing paper search collection of registered design 
marks, then remove the paper collection. The Notice provided that the 
new design code system would not be applied to the backfile, i.e., to 
applications filed or registrations issued before the date on which the 
system is implemented.

Comments and Responses

    In response to the June 23, 2006 Notice, the USPTO received a total 
of nine (9) comments from four intellectual property organizations, 
three attorneys and law firms, and two individuals. One comment agreed 
with the plan and complimented the USPTO on its use of technology to 
offer reliable services to the public. Many comments either voiced no 
objection to or voiced support for the removal of the paper records, 
but requested that steps be taken to verify the accuracy of the 
electronic capture of the records and ensure that implementation of the 
USPTO's plan would not negatively impact the public. Other comments 
opposed the removal of the paper search collection. Several comments 
included suggestions for improving the searchability of marks featuring 
designs of various types (e.g., three-dimensional design marks, marks 
featuring colors and shades of color). These suggestions have been 
referred to the relevant departments of the USPTO involving database 
search systems. However, as those suggestions do not directly relate to 
the proposed removal of the paper search collection, no direct response 
is provided herein. Responses to substantively relevant comments appear 
below.

Comment 1: Microfilm Access

    Some comments expressed concern over the need for sufficient access 
to microfilm equipment for review of the microform collection, once it 
is completed.
    Response: The Public Search Facility in Alexandria, Virginia 
(``PSF'') contains ten microfilm reader workstations that enable users 
to view reels of microfilmed records. Use of such readers is available 
on a first-come, first-served basis. Usage of these workstations is 
monitored by PSF staff, and the levels of use suggest that no lack of 
access problems exist or are likely to arise. However, the PSF has 
arranged that in the event the use of such readers increases, and 
reaches certain threshold levels, the PSF will install more readers to 
meet the demand.
    The paper collection has been maintained at a USPTO search facility 
in Arlington, Virginia, in a separate location from the PSF at the 
USPTO's main offices in Alexandria, Virginia, where most of the 
facilities and equipment for public searching are located. Once this 
microfilming project is complete, and the microfilmed records are 
relocated to the PSF in Alexandria, all trademark searching may be done 
in one location.

Comment 2: Design Coding Error Rate

    Several comments expressed concerns about design coding errors 
under the Vienna Classification system in the USPTO's electronic 
database, and voiced reservations about relying solely on the design 
coding in the electronic databases.
    Response: As an initial matter, the USPTO's plan allows for the 
same redundant search capabilities as are currently available, with the 
significant improvement that for future registrations, they will be 
available through the electronic database to all members of the public, 
not just those on the premises of the USPTO. The USPTO's plan includes 
the replication of the PSD in the electronic database for all newly 
issued registrations. Thus, these records will be coded under both the 
USPTO version of the Vienna Classification system and the PSD system. 
The USPTO intends that the coding of all newly issued registrations 
with the PSD system will be done by the same personnel who have 
previously coded the paper records. With the continuity of the same 
staff using the same coding system, the introduction of an electronic 
format should not negatively impact the accuracy of the coding. Use of 
the same records found on paper but now on microfilm will provide 
searchers equivalent resources to those they already use. In addition, 
all records will continue to be coded under the Vienna Classification 
as well, providing a second design coding scheme which public searchers 
may use as part of a dual search strategy. Should an error have 
occurred with respect to the coding of an image in one system, it is 
unlikely that the same error would be made in the other system. Thus, 
search results will have the same level of accuracy as currently 
produced in a dual search of both electronic and paper records.
    Moreover, recent USPTO efforts to improve design coding under the 
existing Vienna Classification system have improved the quality and 
searchability of the electronic database. Within the USPTO's Trademark 
Services Division, the work of all contracted specially trained design 
coders has been subject to 100% quality review by Federal employees for 
the past several years. The contracted workers receive training 
relating to design coding issues. In addition, the USPTO has created 
eighty (80) new design search codes to allow for greater specificity in 
identifying and coding designs, has identified all the active 
applications and registrations affected by the new design codes, and 
has updated the electronic databases accordingly. The new version of 
the Design Code Manual featuring these new codes was made available on 
the USPTO's Web site on January 6, 2007.

[[Page 35431]]

    In addition, the USPTO has continued to seek input from applicants 
whose marks contain design elements, informing them of the design codes 
applied to their marks and offering the applicants the opportunity to 
submit corrections or additions to the coding. Specifically, each 
applicant for a mark that includes design elements receives a notice 
from the USPTO explaining design coding, explicitly identifying the 
Vienna Classification design codes assigned to the applicant's mark, 
and providing detailed instructions on how to request supplements or 
revisions to the assigned codes. Since November 2005, the USPTO has 
sent approximately 82,000 such notices. Beginning in July 2007, the 
USPTO will seek similar input from registrants whose existing 
registrations are for marks that include design elements. The USPTO 
reviews proposed corrections from any source that pertain to design 
codes assigned to live registrations or applications, has designated 
internal and external e-mailboxes for this purpose, and makes changes 
where necessary. A notice announcing the procedure for submitting 
proposed corrections was previously published in the USPTO's Official 
Gazette and is posted on the USPTO Web site.
    Internal review of the quality of the USPTO's design coding 
indicates that the efforts to improve quality have succeeded. A recent 
USPTO study reflects a relatively low error rate in design coding under 
the Vienna Classification system. In the USPTO's May 7, 2003, report 
concerning the paper public search collections, the USPTO cited a 19% 
design coding error rate among a random sample of 1009 applications 
filed between January 2001 and March 2002. To reevaluate the quality of 
design coding in the wake of the many improvement initiatives 
undertaken by the USPTO, in 2006, the USPTO conducted recurring random 
searches of new applications featuring design-coded marks. Review of 
the accuracy of the codes applied to the marks revealed that only 4.5% 
of records contained errors relating to significant elements of a mark 
that would negatively impact the ability to retrieve such a mark during 
a search for confusingly similar marks. Thus, the USPTO's ongoing 
efforts have significantly reduced the error rate in design coding.
    By the end of 2007, the USPTO will implement an additional quality 
enhancement to its design coding under its Vienna Classification 
system. Under the new procedure, upon acceptance of a registrant's 
section 8 affidavit, the registration file will be referred to the 
USPTO's design coders, who will review, and revise if necessary, the 
Vienna Classification design codes assigned to the registration. Upon 
completion of the review and any revision, the USPTO will notify the 
registrant of the Vienna Classification codes currently assigned to the 
registered mark, and provide information about how to request the 
addition or correction of these design codes.

Comment 3: Uncoded Backfile

    Several comments expressed concerns that the plan to code only 
future electronic records with the PSD system would result in a 
hindered ability to accurately search the historic records of the 
backfile.
    Response: While the USPTO plans to apply the PSD system only 
prospectively to electronic records of registered marks, the historic 
copies of earlier registrations will be retained in microfilm under 
their originally assigned PSD. Thus, a searcher who wishes to search 
the backfile records using the PSD will be able to do so through the 
microfilm collection. The searcher can then also search the electronic 
database for the more recent registrations coded using the PSD system. 
Through this process, the search results will be identical to those 
that would have been retrieved in a search of the paper records. The 
USPTO notes that no legal obligation compels coding the entire backfile 
with the new PSD system in the electronic database. The USPTO has 
determined that the substantial costs and burdens associated with a 
voluntary undertaking of this nature would outweigh any benefit of 
providing the service, particularly where the backfile can be searched 
with the equivalent of the PSD system through the microfilm records.

Comment 4: Requesting Coding Corrections

    One comment noted that the USPTO began sending notices to 
applicants inviting them to correct or add to the design code entries 
assigned by the Office. The commenter recommended that the USPTO 
initiate a quality check invitation to owners of all ``live'' 
registrations to assist the Office in its quality control.
    Response: Beginning in July 2007, the filing receipts for post-
registration filings submitted via the Trademark Electronic Application 
System (``TEAS'') will notify registrants of the opportunity to request 
additions to or corrections of the Vienna Classification design codes 
assigned to their registrations. By the end of 2007, the USPTO intends 
to implement a new procedure whereby, upon acceptance of a registrant's 
Sec.  8 affidavit, the registration file will be referred to the 
USPTO's design coders, who will review, and revise if necessary, the 
design codes assigned to the registration. Upon completion of the 
review and any revision, the USPTO will notify the registrant of the 
Vienna Classification codes currently assigned to the registered mark, 
and provide information about how to request the addition or correction 
of design codes.
    Currently, the USPTO reviews all proposed corrections from any 
source, regarding pending applications or registered marks, either sent 
electronically to the USPTO at [email protected] or 
received at 1-800-786-9199. A notice announcing such was published in 
the Official Gazette on October 19, 2004, and is posted on the USPTO's 
Web site.

Comment 5: Accuracy of Microfilming

    One comment expressed concern over the accuracy of the USPTO's 
microfilming efforts, citing an allegation that approximately 10,000 
drawings may have been missed and not microfilmed in a previous paper 
record microfilming project.
    Response: The quality and accuracy of the microfilming effort will 
be overseen by the staff of the PSF. The PSF conducted two microfilming 
projects in 2006, one of the abandoned trademark application drawing 
pages and the other of the pending trademark application drawing pages. 
PSF staff members with trademark expertise have overseen both projects, 
and quality review inspections have been conducted during each project. 
Care was taken to ensure that the quality of the contents of the reels 
was excellent, and film quality has been found to be exceptionally 
high.
    With respect to comprehensiveness of image capture, the comment 
appears to refer to an incident in one of the projects, where shoes of 
drawings that had not been removed during the initial retrieval were 
located. Specifically, 34 out of approximately 8,000 total shoes with 
approximately 270 drawings per shoe had not been removed initially. 
However, the oversight was identified while the microfilming project 
was still in progress, and these drawings were microfilmed and inserted 
into the correct order. Retrieval and filming of the missing records 
resulted in no impact on the final product. Thus, although these 
records were initially overlooked, this oversight was identified and 
corrected before completion of the project, ensuring

[[Page 35432]]

thorough and accurate results for the project.
    In order to ensure that the upcoming microfilming project is 
complete and accurate, the PSF will employ a comprehensive quality 
review procedure while the project is in progress. The quality review 
should ensure that all records are microfilmed. Moreover, there will be 
a significant ``grace period'' before destruction of the paper records, 
during which they will be available to the PSF if needed to correct the 
microfilm.

Comment 6: Marks Under Paris Convention or Native American Tribal 
Insignia

    Several comments referred to the alleged inadequacy of the 
electronic records with respect to the protected notifications under 
Article 6ter of the Paris Convention and the notified Native American 
tribal insignia.
    Response: As a threshold matter, the USPTO notes that these 
comments refer to records that are not registered trademarks, and 
therefore do not fall within the scope of the paper search collection 
at issue. Nonetheless, in response to the concern expressed in these 
comments, the USPTO has undertaken efforts to ensure that its 
electronic database for such records is complete. A project is nearly 
finished to load missing images into the Office's image data server to 
make them available for viewing on X-Search and TESS, and significant 
progress on the project has already been made. The USPTO notes that the 
missing images identified by the project were also missing from the 
paper search collection. Thus far, over 125 missing images have been 
loaded into the Office's image data server. No paper copies of 
protected notifications or insignia will be eliminated until the 
project is complete.

Comment 7: Archiving the Paper Record Annotations

    One commenter expressed concern that handwritten annotations made 
to the paper records of word marks, which may provide assistance in 
locating intentionally altered spellings or misspellings, have not been 
reviewed for potential incorporation into the pseudo-mark field in the 
electronic database.
    Response: The USPTO created the pseudo-mark field to improve the 
accuracy of searches in its electronic databases, but the USPTO notes 
that no statutory obligation compels the maintenance of this feature. 
The pseudo-mark field shows the literal equivalent of a pictorial 
representation of wording in a design mark, and/or spellings that are 
similar or phonetically equivalent to wording in a word mark. The 
assignment of pseudo-marks to electronic records is performed by the 
Trademark Office within the USPTO. PSF staff members regularly make 
recommendations for pseudo-mark assignments, which may reflect the type 
of information in the handwritten annotations to the paper records. 
Moreover, members of the public may also suggest the addition of 
pseudo-marks. As with the design codes, the USPTO has sought and 
applied public input regarding the pseudo-mark data in the USPTO 
database. For example, since April 4, 2006, the USPTO has notified 
applicants whose marks include a pseudo-mark, to allow them the 
opportunity to correct or add to the pseudo-mark field. The USPTO has 
sent approximately 83,600 such notices.
    Although the pseudo-mark field provides a useful tool for 
searching, the USPTO is not required to provide this feature. Thus, a 
decision not to review an extensive number of documents for potential 
additions to the pseudo-mark field does not negatively impact the 
public. The USPTO has determined that the burden associated with this 
type of nonessential review of each page in the paper search 
collection, for consideration of all the handwritten notations, is too 
great. Nonetheless, because the microfilmed records will accurately 
capture the handwritten notations made on the paper records, the full 
scope of these notations will be archived for future reference.

Additional Information

    As set forth above and in the June 23, 2006 Federal Register 
Notice, the purpose of the new design coding system is to replicate the 
ability to search the paper collection using the PSD. Since 2001, no 
design coding with the PSD has been done for incoming applications in 
the paper search collection. Rather, design coding with the PSD has 
only been applied to registrations. Accordingly, in order to replicate 
the benefits of redundant searching currently available with the paper 
search collection, the new design coding system need only be applied to 
new registrations, not to incoming applications. Therefore, the USPTO 
clarifies that the new system using the PSD will only be applied to 
registered marks. This suffices to ensure that no negative impact on 
existing search capabilities will result from the cessation of 
maintenance of the current paper search collection of registered marks 
including design elements.

Notice

    Accordingly, the USPTO hereby gives notice that upon the completion 
of development and testing of its new redundant design coding system, 
but no earlier than sixty (60) days from the date of this Notice, the 
USPTO will: (1) Begin coding with the new coding system all new 
registrations of marks that include design elements; (2) stop adding 
design coded registrations to the paper search collection; and (3) 
begin microfilming the paper search collection of registered marks that 
include design elements. When microfilming is complete, the USPTO will 
remove the paper search collection of registered marks that include 
design elements. 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.

    Dated: June 22, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E7-12498 Filed 6-27-07; 8:45 am]
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