[Federal Register Volume 75, Number 248 (Tuesday, December 28, 2010)]
[Notices]
[Pages 81587-81589]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-32564]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-T-2010-0090]
Coding of Design Marks in Registrations
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice and request for comments.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (``USPTO'')
proposes to discontinue its secondary design coding, the practice of
coding newly registered trademarks in its searchable electronic
database with design mark codes based on the old paper search
designations.
DATES: Comments must be received by January 27, 2011 to ensure
consideration.
Addresses for Comments: The USPTO prefers that comments be
submitted via electronic mail message to [email protected]. Written
comments may also be submitted by mail to: Commissioner for Trademarks,
P.O. Box 1451, Alexandria, VA 22313-1451, attention Cynthia C. Lynch;
by hand-delivery to the Trademark Assistance Center, Concourse Level,
James Madison Building-East Wing, 600 Dulany Street, Alexandria,
Virginia, attention Cynthia C. Lynch; 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 USPTO's Web site at
http://www.uspto.gov and will also be available at the Trademark Legal
Policy Office, Madison East, Fourth Floor, 600 Dulany Street,
Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at (571)
272-8742.
SUPPLEMENTARY INFORMATION:
Background
Pursuant to 35 U.S.C. 41(i)(1)-(2), the USPTO maintains a publicly
available searchable collection of all United States trademark
registrations. Initially, the collection was provided in paper form
only. Currently, the USPTO provides the collection in electronic form.
When the trademark collection was maintained in paper form, marks
were searched in tall cabinets located at the USPTO's Public Search
Facility. In addition to the public, trademark examiners searched using
the paper collection to determine whether registration should be
refused pursuant to 15 U.S.C. 1052(d). Design marks were separated into
design categories, groups, types, or divisions, subdivided into
specific representations according to the U.S. class of goods or
services covered in the registrations, and then arranged in ascending
order by registration number. Marks with multiple design elements
generally had to be searched separately, which was both challenging and
time-consuming.
In an effort to improve the efficiency of searching for the public
and USPTO examiners, the USPTO began developing a searchable electronic
database of marks in 1982. By 1988, the USPTO's trademark examining
attorneys used the automated system exclusively to conduct their
searches. The USPTO also began to provide public access to the
trademark database of active registered and pending marks through the
Public Search Facility and later on the USPTO Web site.
When developing the new automated search system, the USPTO also
developed a new numerical design code system, modeled after the
International Classification of the Figurative Elements of Marks
(``USPTO Design Classification''), which was intended for an electronic
environment and would enable searching multiple design elements in one
search. In this system, each design element is generally assigned a
six-digit numerical code: the first two digits indicate the category
type (e.g., category 01 is celestial bodies, natural phenomena, and
geographical maps), the next two digits indicate the division (e.g., 07
is globes), and the last two digits indicate the section (e.g., section
05 is globes held by a human). This numerical design code system is
more robust than the paper search design code system, which relies
exclusively on a word or term to identify a design element and cannot
achieve the level of detail of the numerical system.
In conjunction with the new design code system, the USPTO also
provided (and continues to provide) a Design Search Code Manual
(``Manual'') that includes an index, provides guidance on and examples,
cross-references related material, and gives tips on searching using
this system. The Manual is available to the public on the USPTO Web
site.
In 2002, the USPTO submitted a report to Congress detailing a plan
for the removal of a portion of its paper search collection. However,
in response to public concern about relying exclusively on the
electronic system, the USPTO decided to temporarily retain the paper
collection of registrations with design coding, while improving the
accuracy of its electronic database, and modified its plan accordingly.
In 2007, the USPTO submitted a new report to Congress with updated
information about the improved accuracy of its electronic database and
USPTO Design Classification coding, microfilmed all paper trademark
registrations that include design elements, and removed the entire
paper search collection from its search facility. At the same time, the
USPTO replicated in the automated search system the paper design code
system, exhibiting these word-based codes in a new data field for the
electronic search system called the Trademark Search Facility
Classification Code Index (``TC Index''). The TC Index allowed those
who wished to search using the old paper designations to continue to do
so in the electronic database.
Proposed Changes
After more than three years of coding under both the TC Index and
USPTO Design Classification systems, the USPTO proposes to discontinue
applying the TC Index code system to
[[Page 81588]]
registrations because it is no longer cost-effective and is never used
by USPTO examining attorneys and rarely used by the public.
Currently, the assignment of TC Index codes to active U.S.
trademark registrations in the searchable electronic database costs
approximately $531,000 per fiscal year for staffing and systems
maintenance and support costs. Terminating the dual design-coding
system will result in cost savings and will free the staff to perform
more valuable services for the public.
Searches based on the TC Index coding appear to be quite minimal.
For example, Trademark Electronic Search System (``TESS'') searches
conducted from January 1, 2010 though July 31, 2010, show that of the
on-average 2,531,680 searches conducted per month, on average only 229
employed the TC Index coding to search. By contrast, 2,805 searches, on
average, relied on the USPTO Design Classification. Thus, the vast
majority of design searches are currently performed using the USPTO
Design Classification system. USPTO examining attorneys also rely
exclusively on the USPTO Design Classification system to search.
Compared with the USPTO Design Classification coding system, the TC
Index coding system provides little or no benefit to users that would
justify the cost to maintain it. The very general categories of designs
result in cumbersome and time-consuming searches, generating sometimes
enormous results lists for users to review. For example, the TC Index
coding system groups stars under the design code SHAPES-ASTRO, which
encompasses all astronomical shapes consisting of celestial bodies
(such as the moon, sun, stars, planets, etc.), globes, and geographical
maps. Searching this TC design code generates approximately 16,001
registrations and there is no mechanism for restricting the search to
five-pointed stars, or six-pointed stars, or groups of stars. Users
must expend considerable time reviewing all registered marks containing
celestial bodies, globes, and geographical marks to locate the specific
types of star marks that are of interest to them.
Searches using the TC Index codes can also provide imperfect
results. For example, the TC Index does not have a specific code for
Braille, and images are coded as SHAPES-CIRCLES, which retrieves over
45,000 search results. Searching large numbers of circles is an
inefficient way to locate Braille marks. Searches generally are also
less accurate than those performed using the USPTO Design
Classification coding system.
By contrast, advances in coding under the USPTO Design
Classification and its greater specificity provide the public with more
precise and accurate search results than are currently available
through the use of the TC Index codes. Additionally, the USPTO Design
Classification is applied to pending applications for marks with
designs as well as to registered marks with designs, thereby making it
more useful in assessing potential likelihood of confusion. Examining
attorneys rely solely on the USPTO Design Classification for examining
and approving applications for marks with design codes for Federal
registration.
The USPTO invests heavily in its electronic search systems, and
commits considerable resources to ensuring the quality of design coding
under the USPTO Design Classification system. When an application with
design elements is filed, specially trained Federal employees in the
Pre-Examination section of the USPTO review the mark drawing and assign
USPTO Design Classification codes. In 2008, the USPTO amended the Rules
of Practice in trademark cases to require a description of any mark not
in standard character, in order to obtain the applicant's
characterization of design elements to assist the USPTO in making
accurate and comprehensive design-coding determinations. For example,
employees use the applicant's mark description to clarify ambiguous
design elements, thereby promoting correct design coding. The USPTO
continues to provide comprehensive training to Pre-Examination
employees on coding marks with design elements to ensure accuracy in
coding. In addition, the USPTO performs quality review of the work of
the employees, which improves confidence in the consistency and
accuracy of the design coding.
The design coding in an application is reviewed again when a mark
with design elements is assigned to a well-trained examining attorney
to determine whether Federal law permits registration. The examining
attorney reviews the mark, the design codes, and the mark description
and may determine whether codes should be added or deleted. In 2008,
the USPTO also provided rigorous training to its Legal Instruments
Examiners, who assist in reviewing and updating application and
registration data, on coding under the USPTO Design Classification.
This review of design coding by different groups at the USPTO has
greatly increased accuracy and decreased subjectivity in coding.
The USPTO Design Classification codes are also subject to external
review by the public, which further ensures correct design coding. Each
applicant for a mark that includes a design element receives a notice
from the USPTO identifying the USPTO Design Classification codes
assigned to their mark and providing detailed instructions on how to
suggest additions or revisions to the assigned codes. Since 2005, the
USPTO has sent approximately 367,000 such notices. These notices
provide applicants with an opportunity to enhance the quality of the
design coding of marks with design elements.
After a mark registers, filing receipts for post-registration
filings submitted via the Trademark Electronic Application System
notify registrants of the ability to request additions or corrections
to the USPTO Design Classification codes assigned to their registered
marks. Furthermore, upon acceptance of a registrant's Declaration of
Use and/or Excusable Nonuse of Mark in Commerce under 15 U.S.C. 1058,
the registration file is referred to USPTO employees for yet another
review of the design codes assigned to the mark. Upon completion of the
review, the USPTO notifies the registrant of the USPTO Design
Classification codes assigned to their registered mark and provides
information on revising design codes. The USPTO Web site also provides
information on submitting corrections or additions to design codes in
trademark applications and registrations. Even members of the public
may submit a design coding suggestion. These measures all help to
ensure a high level of coding accuracy.
The USPTO also updated the Manual in 2006 to allow for greater
precision in identifying and coding designs. Many of the larger design-
code sections were modified to create smaller sections. For example,
three new design code entries for stars were added, which allow users
to narrow searches to specific types of stars. These changes result in
faster and more efficient electronic searches with little irrelevant
data returned.
In view of the widespread use of the USPTO Design Classification
system, its clear advantages and the limited use of the TC Index
system, the impact of discontinuing coding based on the TC index
appears minimal. The public and the USPTO will realize efficiencies.
The USPTO will be able to devote more of its limited resources to the
maintenance and improvement of the USPTO Design Classification system,
which is more widely used by the public. All existing registrations
coded with paper search designations will remain available in TESS and
on microfilm. Design-coding
[[Page 81589]]
using the USPTO Design Classification system has continually improved
through internal and external review of the coding and through internal
training and quality-review procedures. The USPTO Design Classification
system provides more accurate results, is available to all members of
the public through the Internet, and is exclusively used by the
examining attorneys at the USPTO.
Accordingly, the USPTO hereby gives notice of its intent to
discontinue coding design marks with paper search designations. Any
interested member of the public is invited to provide comments on this
plan within thirty (30) days. The USPTO is providing this opportunity
for public comment because the USPTO desires the benefit of public
comment on the proposal; however, notice and an opportunity for public
comment are not required under 5 U.S.C. 553(b) or any other law. See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rule making for `` `interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice.' '' (quoting 5 U.S.C. 553(b)(A)). Persons
submitting written comments should note that the USPTO may not provide
a ``comment and response'' analysis of such comments as notice and an
opportunity for public comment are not required.
Dated: December 21, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-32564 Filed 12-27-10; 8:45 am]
BILLING CODE 3510-16-P