Strategic Goal 2: Optimize Trademark Quality and Timeliness

The Trademark organization has served an important purpose throughout recorded history, as owners of goods and services historically affixed their names to their products. Trademarks perform a valuable function by identifying the source of products and services and serving as an indicator of reliable quality to the consumer. By registering trademarks, the USPTO has a significant role in protecting consumers, as well as providing important benefits to American businesses by allowing them to strengthen and safeguard their brands and related investments.

Over the last six years, the Trademark organization has met and exceeded its performance targets as it continues to reap the benefits of its significant investments in human capital and in automation and process reengineering. Additional performance targets and metrics are reported on a quarterly basis throughout the year at the USPTO Data Visualization Center – Trademark’s Dashboard (Figure 9) is available at http://www.uspto.gov/dashboards/trademarks/main.dashxml. Reporting these metrics, along with definitions, increases transparency as well as providing a more useful and interactive dialog with the IP community.

Objective 1: Maintain Trademark First Action Pendency on Average Between 2.5-3.5 Months With 12.5 Months for Final Pendency

For the sixth consecutive year, the Trademark organization has consistently met and exceeded its pendency targets for first action and final disposition. With final pendency less than 11 months, a record low for the office, a new application is registered or issued a notice of allowance on average in less than a year. This rapid processing allows applicants to act quickly on marketing strategies and business plans. The examiner’s first action is issued approximately three months from the filing date, giving the applicant an important early indication of registrability. First action pendency has been consistently maintained between 2.5 and 3.5 months despite large monthly variability in incoming workloads and persistent economic uncertainty.

Pendency has improved as electronic processing and filing have become the primary means of conducting business within the Trademark organization. Increased use of electronic forms, particularly Trademark Electronic Application System (TEAS) Plus filings, has improved the efficiency and timeliness of examination. While 30 percent of new applications are TEAS Plus filings, these applications account for 48 percent of first action approvals.

The Trademark organization has managed to dynamically align examination capacity with incoming workloads by maintaining appropriate staffing levels, sustaining high productivity, and judiciously adjusting production incentives to maintain first action pendency at 2.5 to 3.5 months and final pendency at less than 11 months.

Trademark Pendency Performance

Trademark first action pendency measures the average number of months from the date of application filing to the first office action. Trademark final pendency measures the average number of days from date of filing to notice of allowance, notice of abandonment, or registration for applications based on use in that month. Final pendency is measured two ways: excluding and including cases that were previously suspended or were involved in inter partes proceedings at the TTAB. First action pendency (Table 9) has been maintained within its optimized range of 2.5 to 3.5 months every month for more than five years now. Average final pendency, including suspended and inter partes cases, was 12.6 months. Excluding applications that were suspended or delayed for inter partes proceedings, average final pendency (Table 10) was 10.5 months. TEAS Plus remains the filing method of choice being the fastest and most cost-effective method to apply and register a mark, as illustrated in Figure 10 to the right.

Objective 2: Continuously Monitor and Improve Trademark Quality

Commissioner for Trademarks Deborah Cohn.

The Trademark organization continues to meet and exceed high quality standards and achieve year-to-year gains and enhancements. About 97 percent of all first actions and final decisions (approvals and rejections) were compliant with the registrability standards set by statute, and also met or exceeded agency standards for writing quality. Results for both the first and final action measures are above their targets and indicate high accuracy in decision-making and high quality of writing. To sustain these high performance levels, the Trademark organization continues to emphasize and improve training, to promote electronic filing and processing, and to make greater use of on-line tools and enhanced processes.

Nevertheless, the Trademark organization strives to enhance the quality of examination by adopting more rigorous customer-centric measures. The new “excellent quality” measure—which reflects comprehensive excellence of the search, evidence, writing, and decision-making of the initial office action, while also emphasizing the appropriate use of telephone and e-mail communications to settle or clarify issues with the applicant or its attorney—exceeded its first year target by almost nine percentage points. The target is an indication of the high standard that has been set in defining excellence. The Trademark organization has used feedback from user groups to ensure that the standards of excellence applied by the Trademark organization reflect users’ perception of excellence as well.

Trademark Quality Performance

The Trademark organization evaluates examination quality for all issues that could be considered deficient in making a first and final action substantive decision. Evaluations are conducted on a random sample of applications. The evaluations review the quality of decision making of the examiner’s first office action and final action (an approval for publication or a final refusal).

The “in-process review” for assessing excellent and deficient work creates a comprehensive, meaningful, and rigorous review of what constitutes quality. The results of an examiner’s first action (Table 11) and final office action (Table 12) are reviewed for the correctness of the substantive decision-making, and the quality of the search strategy, evidence, and writing. The measures consider a wide scope of elements for review and evaluation, and the results are used for targeted training on topics that warrant improvement. Examiners are given feedback about excellent as well as deficient work to further improve quality.

Trademark quality has continued to demonstrate high levels and sustained improvement of the search and examination process. To increase quality performance even further, a new measure and a new incentive award that focuses on the comprehensive excellence of the entire office action was developed effective FY 2011. The new quality measure raises the examination standards and aims at excellence as perceived by customers and internal stakeholders (Figure 11).

Trademark Efficiency Performance

The efficiency measure (Table 13) is calculated by dividing total expenses associated with the examination and processing of trademarks (including associated overhead and allocated expenses) by outputs or office disposals. The measure is a relative indicator of the efficiency of the trademark process and related services over time, it does not represent the unit cost of a trademark since office disposals are only one measure among many products and services that the USPTO performs each year.

Objective 3: Ensure Accuracy of Identifications of Goods and Services in Trademark Applications and Registrations

Following changes in the standard for fraud at the USPTO, and resulting concerns about the potential for inaccuracy in the identifications of goods and services on the register, the Trademark organization began taking steps to assess this issue. The Trademark organization hosted a roundtable in 2010 with the George Washington University School of Law to discuss improvement to the accuracy of identifications with members of the user community. Public comments were collected on a suggestion from the roundtable. The Trademark organization also discussed the issue with the Trademark Public Advisory Committee.

Following up on one of the leading suggestions from the 2010 event, in July 2011 the Trademark organization issued a Notice of Proposed Rulemaking that would permit the USPTO to require additional specimens or other evidence in connection with a Section 8 Affidavit of Continued Use. Comments on the proposed rule were due September 12, 2011. Once finalized, the rules changes initially would facilitate a limited pilot in a relatively small number of cases to assess the level of accuracy of the identifications. The pilot could yield information about the reliability of the trademark register in this regard, so that the USPTO and stakeholders may determine whether an inaccuracy problem exists and consider measures to address it, if necessary.

Objective 4: Enhance Operations of Trademark Trial and Appeal Board

The TTAB issued 38 precedential decisions on a wide variety of substantive and procedural matters. The TTAB’s precedential decisions on ex parte appeals provide procedural and substantive guidance to the Agency’s trademark examining attorneys, trademark owners, and the trademark bar. The TTAB’s precedential decisions in opposition and cancellation proceedings provide guidance to trademark owners and the bar on procedural matters pertaining to the Trademark Rules of Practice, the application of the Federal Rules of Civil Procedure to Board cases, and on substantive legal matters.

In May 2011, TTAB issued a new edition of the Trademark Board Manual of Procedure, which was revised to incorporate new material related to the 2007 amendments of the Trademark Rules and the more than 300 precedential decisions that have issued since the last revision. The revised manual is posted at: http://www.uspto.gov/trademarks/process/appeal/TBMP_Master_Document_May_2011.pdf, and is in a searchable format for the first time. This version of the manual is easier to use and will be easier to revise on a regular basis than the previous edition.

The TTAB also continues to work closely with the bar to expand and refine its Accelerated Case Resolution (ACR) practice options. The TTAB has already seen increased use of ACR to expedite the disposition of inter partes cases. To facilitate the use of ACR, the TTAB posted on its Web page suggested approaches to ACR from practitioners and expects to post additional suggestions as they are developed by innovative practitioners and the TTAB’s own attorneys and judges. In addition, the TTAB issued a Notice of Inquiry to solicit suggestions from stakeholders about the TTAB’s involvement in the settlement discussions of parties. Finally, the TTAB began discussions with the bar regarding development and possible adoption of new and informative performance measures that will inform stakeholders about the state of TTAB practice.

Objective 5: Modernize IT System by Developing and Implementing the Trademark Next Generation IT System

The Trademark organization is progressively becoming a fully electronic organization. More than 98 percent of new applications are received electronically and 73 percent are processed completely electronically from filing to final disposition (Table 14). This performance measure exceeds the target of 68 percent and demonstrates that the Trademark organization is making good use of its electronic systems and is successfully motivating applicants to conduct correspondence electronically. In an effort to further improve upon the rate of electronic processing, the Trademark organization has held a number of roundtables and focus sessions with user groups to identify process enhancements and novel practices that eliminate the need for paper-based filings and communications.

Given the critical importance of the IT systems and the existing state of its infrastructure and systems, the USPTO has embarked on an ambitious IT modernization program for Trademark systems. The modernization program will enhance functionality, availability, security, scalability, quality of service, and overall cost efficiencies.

The program represents a major multi-year investment that underwent a rigorous approval process with extensive technical and managerial reviews. The USPTO has reached out to all key external and internal stakeholders to identify the needs, define the requirements, assess and track the cost-benefits of the investment, and will continue to seek input from stakeholders as progress is made on the program. An internal Business Architecture Group has been established and tasked with refining and articulating a capability map that defines the current business environment, the future requirements and the top priorities.

The Trademark organization is in the process of separating its current IT systems and creating a virtual environment to support the Trademark organization’s Next Generation computer-based resources. The transition will require judicious maintenance of legacy systems and legacy system improvements while migrating to a virtual architecture.

The development of the Trademark organization’s Next Generation IT systems is bearing its first fruit with the “cloud” deployment of the Trademark Data Retrieval (TDR) system and functionality. TDR, which now offers multi-media functionality, provides an important communication link for applicants to retrieve electronic notifications of office actions.

Trademark E-Management

The number of electronically filed trademark applications has progressed steadily over the years as a result of promotional events, increased number and type of applications available for filing electronically, improved functionality and enhancements, and lower fees for filing electronically. The USPTO completed the launch of 10 informational trademark instructional videos that are available at the Trademark Information Network through http://www.uspto.gov/trademarks/basics/index.jsp. The Network was designed to present information in an entertaining manner as news style broadcast how-to videos covering important topics and critical application filing tips to address common filing mistakes.

The Trademark organization has created an electronic trademark application record management process by capturing all incoming application and registration filings as an electronic file, that includes text and image of the initial application and subsequent applicant and office correspondence. Examining attorneys use the electronic record to process and examine applications, manage their dockets of pending work, and take action on applications. The same electronic files are similarly used to process registration maintenance documents. All paper documents associated with active registrations have been converted into electronic files.

A new measure was introduced in 2009 to address the major USPTO strategic challenge to complete full electronic workflow and file management for receiving and processing trademark applications and related documents. The measure (Table 14), “Applications Processed Electronically,” has been developed to identify the degree to which the Trademark organization is able to encourage applicants to file and submit correspondence electronically as well as implement systems that can electronically process, examine, and dispose of an application in a completely electronic environment. This measure reports the percentage of trademark applications that were filed, processed, and disposed of relying completely on electronic systems and communications. This measure replaced the electronic filing performance measure of which the target has been achieved.

To increase electronic processing further, the Trademark organization has been transforming notices from paper to electronic form, sending these notices electronically rather than by regular mail to those applicants and registrants who have authorized e-mail communication. Customer focus sessions have also been conducted to identify best practices and issues that prevent them from conducting all their transactions and communications electronically. As a result of the feedback, changes are being made in the electronic forms. The Trademark organization is making great progress in becoming a paperless organization that is responsive, efficient, and environmentally friendly, as shown in the data for Figure 12, to the right.

Objective 6: Develop a New Generation of Trademark Leaders

The Trademark organization witnessed a change in two of its executive positions in the past year. Deborah Cohn was named the Commissioner for Trademarks, succeeding Lynne Beresford who had served in the position for five years. The transition included the appointment of Mary Boney Denison as Deputy Commissioner for Trademark Operations, the position that was previously held by Ms. Cohn.

For a fourth year, the Trademark organization continued programs in support of the Trademark Human Capital Strategic Plan. The Trademark plan, which was developed to further the objectives of the Office of Personnel Management Federal Human Capital Strategic Plan, has shown results. Teams have continued work on programs and training in support of the three “human capital” objectives of talent management, results-oriented performance culture, and leadership and knowledge management.

The Trademark organization continues to improve upon its successful telework program through the continued expansion of telework opportunities and by expanding the use of remote access and collaboration tools:

• 97 percent of trademark employees are eligible to work from home;
• 88 percent of all eligible Trademark employees (78 percent of all Trademark employees) are working from home at least one day per week; and
• 90 percent of eligible examining attorneys work from home nearly full time.

In past years, the program was expanded to provide work-at-home opportunities for employees in the Examination Support Unit, the Intent-To-Use/Divisional Unit (ITU), and Pre-Examination Unit. As a result, programs exist throughout the organization to expand the number of employees and functions supported by telework.

With the implementation of the Telework Enhancement Act of 2010, the telework program will be expanded further by allowing eligible employees to locate more than 50 miles away from the office. Trademark management and labor worked with an inter-agency oversight committee to develop a pilot program and define a framework to measure and track relevant cost and performance data as required by the Act. The office is able to tap into and retain geographically diverse pools of skilled labor and talent as a result. This is best illustrated in the Telework Map, Figure 13, below.