[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]


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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.

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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]
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