Annual Technical Report 2009 on Trademark Information Activities submitted by United States of America (CWS/ATR/TM/2009/US)
Where URLs are requested below, it is preferred that either URLs which are likely to remain stable over time (three years or more) are provided, or home (main) page URLs are provided with a short explanation of how to access the corresponding information.
I. Evolution of registration activities
In calendar year 2009, the USPTO received 268,093 applications for the registration of a trademark including 351,875 classes. Application filings decreased 8.7 percent, as measured by total classes filed. The decrease was 10.0 percent under prior year results.
The USPTO issued 177,361 certificates of registration plus renewed 44,733 marks in calendar year 2009. This represented a decrease of 8.8 percent from the prior year in the number of marks registered.
II. Matters concerning the generation, reproduction, and distribution of secondary sources of trademark information, i.e., trademark gazettes
Publishing, printing, copying techniques
The USPTO extracts text and image data to generate the weekly publication of the electronic Official Gazette and enable the printing of paper copies of the registration certificates and updated registration certificates. The textual elements of these products are exported from the Office’s central database along with the representations of the marks which are extracted from a database of digitized images, automatically inserted into the layout. The results are both posted on the USPTO’s Website and forwarded, electronically, to the publisher, the U.S. Government Printing Office (GPO), as PDF files. This process results in the fully automated formatting of the electronic Official Gazette. During calendar year 2009, registration certificates were redesigned to include standardized paper size and inclusion of maintenance requirements on the reverse side of the registration certificate. These changes allow the Office to print the registration certificates in-house, eliminating costs associated with non-standard paper size and contract printing. The Office also benefits by increased control of the printing process. This process change is a step in moving the Office towards a more maintainable system using a standard technology.
Main types of announcements of the Office in the field of trademark information
The USPTO provides a Notices Section in the Official Gazette in which the Office publishes various materials related to the registration and maintenance of trademarks. In addition, the USPTO makes extensive use of the USPTO Website to provide free access to trademark news and information. The Website, at http://www.uspto.gov provides access to the Official Gazette, a searchable data base of pending applications and registrations (TESS), access to the file contents of pending applications (TDR), an administrative data base with information regarding the bibliographic data and status of trademark applications and registrations (TARR), the Trademark Manual of Examining Procedure, the U.S. Goods and Services Manual using in examination; data bases related to the Trademark Trial and Appeal Board actions, and various other materials related to Trademarks.
Mass storage media and microforms used
The Office collects 100% of all new application data via a scanning and optical character recognition process (for paper filed applications) and in various formats including image and XML (for those applications and correspondences received and transmitted electronically). Images of all new applications and subsequent correspondence are available electronically at the desktop of examiner’s working in the Office or working from home. The contents of the older paper pending paper files have been captured as electronic records and the files for registrations continued to be captured.
Word processing and office automation
The USPTO continues to revise and expand the word processing templates that support examiner correspondence. All information and resources needed to process trademark applications or registrations are made available electronically from the employees’ desktop (whether in the Office or working from home).
Techniques used for the generation of trademark information (printing, recording, photocomposing, etc.)
As described above, the Office has automated its photocomposition process and performs fully automatic layout of all character and image data. The Office continues to use the US Government Printing Office for subscription printing of the Official Gazette.
III. Matters concerning classifying, reclassifying and indexing of trademark information
Classification and reclassification activities; Classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification (please indicate whether goods and services for the registration of marks and whether the figurative elements of marks are classified by your Office and, if so, which classification(s) is (are) used)
The USPTO currently uses a system for indexing the figurative elements of design marks that is based on the Vienna Classification System. The USPTO uses the three levels of classifications for all designs in the database for applications and registrations. These design codes are maintained within the automated databases and are used to support searching design marks within the Office’s search databases (both the internal search system (X-search) and the database made available on the Internet (TESS)).
The USPTO currently uses the Nice Classification system for classification of goods and services. The USPTO uses three additional classes, i.e., 200 for collective marks and “A” and “B” for certification marks. Other than this deviation, the USPTO applies Nice classifications to all goods and services.
Use of electronic classification systems to check the classification symbols furnished by an applicant and which are contained in the lists of goods and/or services
The USPTO has developed an Intranet based search tool to provide for electronic searching of the classification manual. This system provides USPTO staff with improved access to classification manual and Notices while providing greater flexibility for modifications. It is now possible to modify the contents of the classification manual on a daily basis. The technology supporting this facility is the same as that supporting the Offices search system thus providing a search syntax already familiar to the examining attorneys.
Obligation for applicants to use pre-defined terms of the classification applied
The Office has two options for electronic filing. One of those tracks (TEASPlus) provides the filer with the contents of the ID Manual and requires strict adherence with those entries, adding text only where specifically allowed. The filers that use the TEASPlus option have a reduced fee.
Bibliographic data and processing
The USPTO continues to use the automated search system (X-Search) for all internal trademark searching requirements. Customers are provided with automated search access on TESS, accessed via the www.uspto.gov site. Additionally, customers may access the internal Trademark search system at the USPTO Public Search Facility in Alexandria, Virginia. The contents of the two databases are identical and the search software is the same. The Internet site provides a browser interface while the internal site is accessed via an MS Windows based rich client application.
IV. Trademark manual search file establishment and upkeep
The USPTO does not maintain a manual search file. All searches are performed using an automated search system.
V. Activities in the field of computerized trademark search systems
In-house systems (online/offline)
As described above, the USPTO continues to support two automated trademark search systems. X-Search for all internal trademark searching requirements with limited access available on campus to the public and through TESS, which is accessed via the Internet at the www.uspto.gov site.
External resources are used for specific search requirements. Included are Lexus/Nexus and certain CD-ROM based search database such as Computer Select and McCarthy/LawDesk. Additionally, the Internet is available to all Examining Attorneys for reference.
Administrative management systems (e.g., register, legal status, statistics and administrative support)
The USPTO continues to rely on TRAM as the central automated database system to support the management of the internal operations of the Trademark Office. In 2009, the Office began the planning process for next generation systems, (referred to as Trademark Next Generation Systems) to include document management, a workflow system and business rules. Trademark Next Generation will provide fully automated support for, and access to, all resources required to support trademark end-to-end operations.
Equipment used (hardware, including the types of terminal and network used, and software), carriers used
The USPTO has a rich environment of equipment supporting Trademark operations. The TRAM system runs on a UNISYS ClearPath mainframe server; MS Windows and HP-UX servers support other systems. A complete description of technical resources used is included in the USPTO Technical Reference Manual.
VI. Administration of trademark information products and services available to the public (relating to facilities, e.g., for lodging applications, registering trademarks, assisting clients with search procedures, obtaining official publications and registry extracts)
Information services available to the public (including computerized services and search files contained in libraries remote from your Office and trademark information posted by your Office on the World Wide Web)
The USPTO provides valuable resources on the Internet to assist our customers. There is an electronic filing system (TEAS and TEASPlus) that allows for the completion payment and submission of new applications and subsequent documents online. TESS provides a quality information retrieval facility to search for marks that are within our database. TARR provides up-to-date data on applications and registration, including the current status and prosecution history. The Trademark Document Retrieval (TDR) system provides on-line access to the complete file contents of all pending application files and some registered files. Visit us at: http://www.uspto.gov where all of the mentioned Trademark systems reside. Additional materials, including manuals used by examiners, which explain various aspects of the USPTO and the trademark system, are also available on-line.
The USPTO Public Search Facility located in Alexandria, VA provides public access to trademark information in a variety of formats including on-line, microfilm, and print.
The USPTO has a number of Trademark products and services available for purchase. A description of trademark data products available for purchase can be found at: http://www.uspto.gov/products/catalog/trademark_products/index.jsp
TM DVD-ROM products are available for purchase by the public:
Trademarks BIB: Bibliographic Information from Abandoned, Canceled, Expired, Pending, and Registered US Trademarks
This Cassis DVD-ROM contains the text of all abandoned, canceled, expired, pending, and registered trademarks from 1884 to present with 30 searchable fields. This DVD-ROM product is updated every two months. Trademarks BIB also refers to trademark image locations on USAMark, described below. USAMark: Facsimile Images of United States Trademark Registrations This Cassis DVD-ROM contains facsimile images of U.S. trademark registration certificates issued from 1870 to the present. An image is an actual page of the trademark, including renewals and modifications, and looks just like the original printed document. USAMark is a document delivery system, not a search system. Retrieval is by document number only from a cumulative index that covers all issued discs. Excellent printed copies of actual documents can be obtained directly from a laser printer. USAMark is published monthly.
VII. Matters concerning mutual exchange of trademark documentation and information
International or regional cooperation in the exchange of trademark information, e.g., in the form of official gazettes
The most recent 52 weeks of the Trademark Official Gazette (“TMOG”) are available for free through the USPTO’s web site at: http://www.uspto.gov/news/og/trademark_og/index.jsp
Exchange of machine-readable information
The USPTO offers a variety of machine-readable products extracted from trademark databases. A catalog of products can be found at the following address: http://www.uspto.gov/products/catalog/trademark_products/index.jsp
US trademark information is provided to 100 intellectual property offices on optical disc products (mostly in DVD-ROM format).
The USPTO also exchanges data with WIPO in electronic format in support of the Madrid Protocol.
VIII. Matters concerning education and training, including technical assistance to developing countries (please indicate URLs of web pages of the Office’s website wherever appropriate)
The USPTO Global Intellectual Property Academy (GIPA) offers capacity building programs in the United States and around the world on IPR protection, enforcement, and capitalization. Capacity-building programs are offered to patent, trademark and copyright officials, judges, prosecutors, police, customs officials, foreign policy makers, examiners and rights owners. In delivering capacity building programs, the Academy works closely with other U.S. government agencies, trading partners, international organizations, and rights holders. Through GIPA programs, foreign officials learn about international IP obligations and norms, and are exposed to a U.S. model of protecting and enforcing IPR and discussion of IP issues in a collaborative learning environment. In 2009, the GIPA provided training to more than 2,200 officials from 128 countries on a variety of topics, including IP protection and enforcement, and technology transfer.
In 2009, the USPTO’s GIPA initiated a new pilot program exposing patent officials from other countries to the USPTO Patent Training Academy's (PTA) patent examiner training program. The six-month long International Examiners in Residence (IEIR) Program included most of the PTA's new examiner training curriculum. In addition, the IEIR covered other IP topics, such as copyright, trademark and enforcement issues. In order to provide a full perspective of the U.S. IP system, the IEIR also included visits to the Board of Patent Appeals and Interferences, the federal District Court of the Eastern District of Virginia, the Court of Appeals for the federal Circuit, and the Supreme Court, to witness oral hearings at each of these judicial proceedings. Eight patent examiners in various technologies from the patent offices in China, Germany, Korea, and Saudi Arabia participated in the pilot program.
GIPA also conducted a two-week long advanced trademark examination program for sixteen examiners from the IP offices in Brazil and India. The program provided the senior examiners with an in-depth analysis of the U.S. approach to the examination of trademark applications.
In 2009, the USPTO developed and produced GIPA’s new Distance Learning Modules, a new method for delivering IP education, which provide presentations addressing the basics of trademarks, geographical indications, patents, copyright, enforcement and trade issues, as well as information on international standards and the U.S. experience. The modules are available online and include a video presentation and an accompanying PowerPoint presentation on each topic. The Distance Learning Modules are also accessible in a number of foreign languages, including Arabic, French, Russian and Spanish.
In 2009, the USPTO and the Chilean National Institute of Industrial Property (INAPI) signed an MOU, emphasizing the importance of bilateral relationships, and wherein the USPTO agreed to provide technical assistance to improve the administration of intellectual property systems and to develop professional skills. Additionally, the USPTO signed an MOU with the Brazilian National Institute of Industrial Property (INPI) focusing on cooperation in matters relating to the acquisition, utilization and protection of industrial property rights.
The USPTO continued its work under a Memorandum of Understanding (MOU) with India’s Department of Industrial Policy and Promotion to cooperate in capacity building activities, human resource development, and public awareness programs. Specific activities as part of an action plan on bilateral cooperation were developed, including a number of anti-counterfeiting public awareness events in cities throughout India, IPR border enforcement training for Indian customs officials, IPR education events for universities, and an IPR workshop for judges from Delhi’s Lower Courts.
In the area of enforcement, the USPTO’s GIPA organized and hosted two joint APEC-ASEAN-PIF capacity-building events, namely the Colloquium for Public Prosecutors and the Judiciary on IPR Enforcement in Kuala Lumpur, Malaysia, and the Workshop on the Border Enforcement of Intellectual Property Rights in Honolulu, Hawaii. GIPA also conducted a successful two-week study tour program on IPR enforcement and the U.S. legal system for 23 foreign government judges and prosecutors including officials from Brazil, Brunei Darussalam, Chile, Cambodia, India, Indonesia, Laos, Lebanon, Malaysia, The Philippines, Thailand, and Vietnam.
In Latin America, the USPTO partnered with the U.S. Embassy in Santiago, Chile, to deliver a two-city program for Chilean border enforcement officers covering the issue of IP enforcement in March of 2009. In July 2009, through partnership with INL, the USPTO conducted an enforcement program for Brazilian judges. With INL funding, the USPTO conducted a judicial workshop for Mexican judges in Mexico City, Mexico in September 2009. The workshop gave the judges an overview of intellectual property and provided them with case studies on trademarks, copyrights, provisional measures and deterrent sentencing. The USPTO also participated, by invitation from the American Chamber of Commerce (AmCham) in Guatemala, in training Guatemalan judges by providing them with an overview of enforcement provisions in the DR-CAFTA.
In Egypt, the USPTO held a Counterfeit Medicines Workshop in January 2009, which addressed all facets of investigating, interdicting, seizing and prosecuting IPR violations involving pharmaceuticals. The attendees came from the Ministry of Health, Ministry of Justice, Customs, Internal Security and the Consumer Protection Agency. Following the program, the Ministry of Health revised its internal regulations to provide for unannounced raids of pharmaceutical distribution warehouses, which is considered a dramatic improvement in enforcement. In Lebanon an IPR Border Enforcement Workshop was held in June 2009, which included basic and advanced border enforcement concepts. The participants came from Customs, Internal Security Forces (ISF) and Public Prosecution.
In sub-Saharan Africa, the USPTO coordinated or participated in IPR enforcement related programs in Ghana, Kenya, Mali, Mozambique, Nigeria, and South Africa. In February 2009, the USPTO co-sponsored a regional customs program in Accra, Ghana that led to the development of an Economic Community of West African States (ECOWAS) endorsed set of IPR recommendations. In May 2009, the USPTO conducted a regional customs workshop in South Africa that also led to the development of recommendations endorsed by the 14 countries in attendance from the Southern African Development Community (SADC). These recommendations will serve as guidelines for future capacity building exercises and assist with the improvement of IPR enforcement on a regional basis.
In June 2009, the USPTO in cooperation with US Customs & Border Protection provided training to over 250 Nigeria Customs Service (NCS) officials at multiple ports in and around Lagos, Nigeria. The USPTO is facilitating the development of a database for NCS that will allow for the distribution of information critical to reducing the flow of counterfeit and piratical goods. In addition to the in-country training, the USPTO has also trained more than 400 government officials from 31 sub-Saharan Africa countries at GIPA on a range of IP protection and enforcement topics. These programs provide capacity building via the sharing of best practices with US IP experts and are crucial for establishing training relationships for the more widely attended and region specific in-country programs.
In June 2009, in cooperation with the United Kingdom Industrial Property Office and the Government of Bosnia-Herzegovina, USPTO conducted in Sarajevo a regional conference for police and prosecutors on intellectual property crime. Officials from Bosnia-Herzegovina, Croatia, Serbia, Slovenia, Montenegro and the United Kingdom participated in the program which focused on hard goods counterfeiting and digital piracy investigation and prosecution.
In Russia, USPTO organized and participated in the following programs in May 2009: "IPR Roundtable for Prosecutors and Investigators" in St. Petersburg for approximately 20 prosecutors and investigators from St. Petersburg; and a "Colloquium for the Russian Judiciary on IPR Enforcement" in Moscow for more than 120 Russian federal judges from cities and regions around Russia. In September, the USPTO conducted a customs study tour of the United States for twelve officers from the Russian Federal Customs Service (RFCS). The RFCS officers visited ports at Long Beach, LAX and Otay Mesa working along side officers from the U.S. Customs and Border Protection (CBP) on all phases of IPR enforcement including reviewing, selecting, and examination of shipments. The FRCS officers met with stakeholders and visited CBP headquarters in Washington, DC where they were exposed to CBP's recordation system and IT solutions. The delegation also visited the National IPR Center and Immigration and Customs Enforcement (ICE) offices in Los Angeles and San Diego for instruction on criminal IPR investigations at the border. Also in Russia, two Prosecutors and Judicial Workshops were held in May 2009, which focused on raising awareness and capacity among the procuracy and judiciary. The program in St. Petersburg was attended by approximately 40 prosecutors and investigators. Topics included: investigations, handling evidence, working with witnesses and right holders, and preparing and prosecuting IPR crimes. The workshop in Moscow was held at the Russian Academy of Justice, and was attended by approximately 120 judges. Topics included: case management, evidence, sentencing, IPR overview and the use of experts.
In Ukraine, the USPTO organized and participated in a two-day Workshop on the Adjudication of Intellectual Property Rights in July 2009 for 25 Ukrainian judges, including judges from the Supreme Court of Ukraine. The Ukrainian judges received training on international standards and obligations for IPR cases and learned best practices from a U.S. Federal Judge and a British Senior Circuit Judge.
The USPTO continued to offer technical assistance in China, with a focus on providing the provinces with capacity-building programs relating to civil, criminal, and border enforcement. The USPTO continued to host visiting delegations from China, both from Beijing and from the provinces. The visitors have included Chinese officials from Guangzhou and Xian, as well as other cities. These officials visited the USPTO to learn about our legal system, the administrative procedures followed by the USPTO, how IPRs are protected and enforced in the United States, and the functions and responsibilities of the USPTO and other U.S. government intellectual property-related agencies. The USPTO hosted a group from China’s National Copyright Administration to discuss software legalization. The USPTO also hosted SIPO delegations on a range of diverse issues, including IP asset management and human resource and financial management issues of patent offices.
Promotional activities (seminars, exhibitions, visits, advertising, etc.)
As part of the STOP initiative, the USPTO continued its intensive national public awareness campaign by offering web-based seminars targeting small and medium-sized businesses where participants learned what intellectual property rights are, why they are important, and how to protect and enforce these rights. The USPTO engaged in targeted initiatives with the Minority Business Development Agency (MBDA) (with which USPTO has a Memorandum of Understanding) and the Indian Arts and Crafts Board, Department of Interior, to provide education and training. The USPTO offers programs in a web-based format, on request, that can be tailored to the intellectual property most critical to the requesting organization and that also can include training by hypothetical or business case studies.
New in 2009 and first offered in conjunction with the 2009 USPTO Trademark Expo at the USPTO headquarters in Alexandria, Virginia, the USPTO offered a seminar titled, “What Every Small Business Must Know about Intellectual Property: Myths, Mysteries, Mistakes – Debunked, Unveiled, Corrected.” The USPTO and the National Institute of Standards and Technology (NIST) also have provided training on intellectual property basics as well as training on advanced intellectual property issues to the NIST Hollings Manufacturing Extension Partnership (MEP) network of MEP Centers in the United States.
Since 2007, the USPTO has operated a STOP Information Booth for the International Music Products Association (NAMM) annual and summer trade shows, providing the USPTO with a unique opportunity to explain the USPTO’s patent and trademark services and to provide general information on the full range of intellectual property. NAMM events include manufacturers, distributors and retailers, from the United States and abroad, many of whom are inventors and creators.
IX. Other general information related to the Office that is available on the Internet -- URLs of web pages of the Office’s website that: