Annual Technical Report 2003 on Trademark Information Activities submitted by United States of America (SCIT/ATR/TM/2003/US)
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I. Evolution of registration activities
In calendar year 2003, the USPTO received 223,813 applications for the registration of a trademark including 273,581 classes. Application filings, as measured by total classes filed, increased 3.6 percent over prior year results, following a decline of 4.8 percent between 2001 and 2002. Through the first seven months of calendar year 2004 application filings were 143,509 with 177,053 classes, nearly 13 percent higher than the same period one year prior. Trademark application filings are projected to be more than 300,000 classes by the end of 2004.
The USPTO issued 130,934 certificates of registration including 169,720 classes in calendar year 2003. This represented a decrease of 10.8 percent from the prior year in the number of marks registered. The number of marks registered was still the second highest registered in a single year and reflects the progress made in disposing of pending applications that were still under examination from years when filings were increasing at record levels.
The U.S. became a member of the Madrid Protocol on November 2, 2003. All the legal requirements for implementing the Madrid Protocol in the U.S. were met to ensure implementation on the effective date. Under terms of the treaty, U.S. trademark owners will be able to file a single application with the USPTO in English, and pay in U.S. dollars. In the first two months under the Protocol, the USPTO received 200 international applications and 148 requests for extension of protection containing 267 classes. The International Bureau of the World Intellectual Property Organization (WIPO) issued 19 international registrations.
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 (made available from the USPTO web site http://www.uspto.gov/web/trademarks/tmog/) 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 the a database of digitized images, automatically inserted into the layout and forwarded electronically to the publisher, the U.S. Government Printing Office (GPO), as a Postscript file. This process results in the fully automated formatting of the electronic Official Gazette and printing of the registration certificates. Improvements realized include increased economy and reduced cost and publication time – allowing for closer quality review of the products prior to publication. Additional reductions in process time are expected in the near future, as this process possesses the potential to further reduce overall cycle time.
Main types of announcements of the Office in the field of trademark information
The USPTO provides a Notices Section 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 information. The Website, at http://www.uspto.gov currently provides access to the Official Gazette, a searchable data base of pending applications and registrations (TESS), 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 are being captured as electronic records.
Word processing and office automation
The USPTO continues to revise and expand the word processing templates that support examiner correspondence. The most recent revisions are based on the newly revised version of the Trademark Manual of Examining Procedure (TMEP). In most instances, all information and resources needed to process new applications is available electronically at the employees’ desktop.
Techniques used for the generation of trademark information (printing, recording, photocomposing, etc.)
As described above, the Office had automated its photocomposition process. Previously, the Office extracted all character data from the central database and manually included the design elements, the process now performs fully automatic layout of character and image data. The Office employs 3B2 for layout and continues to use the US Government Printing Office for production printing.
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 state 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 new 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
None.
Bibliographic data and processing for search purposes
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 search system at the Trademark Search Library in Arlington Virginia and selected PTDLs. 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 client application.
IV. Trademark manual search file establishment and upkeep
The USPTO does not maintain a manual search file for internal use. All searches performed by examiners are completed 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 and limited access to the public and TESS which is accessed via the Internet at the www.uspto.gov site.
External databases
External resources are used for specific search requirements. Included is 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, administrative support, etc.)
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. Work has recently commenced on the development of a workflow system (referred to as the Trademark Information System) that would provide fully automated support for, and access to, most all resources required to support trademark 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 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 facility (TEAS) that allows for the completion payment and submission of new applications 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.
In addition, there are various other offerings including manuals used by examiners that explain various aspects of the USPTO and the trademark system. Visit us at: http://www.uspto.gov
The following TM CD-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 CD-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 USPTO discontinued the distribution of paper copies of the Trademark Official Gazette as of the November 25th issue. The USPTO makes the most recent 5 weeks of OG issues available for free through its web site at: http://www.uspto.gov/web/trademarks/tmog/.
Exchange of machine-readable information
The USPTO offers a variety of machine-readable products from the trademark databases. A catalog of products can be found at the following address: http://www.uspto.gov/web/offices/ac/ido/oeip/catalog/index.html
US trademark information is provided to 112 intellectual property offices on optical disc products (mostly in DVD-ROM format.
VIII. Matters concerning education and training including technical assistance to developing countries
Assistance to developing countries (sending consultants and experts, receiving trainees from developing countries, etc.)
The USPTO offers various programs to provide technical assistance to developing countries and to countries moving to a market economy. Programs focus on establishing adequate systems in these countries for the protection of intellectual property rights. They also provide intellectual protection enforcement training. With the exception of the Visiting Scholars Program, the USPTO programs usually last one week. The goal of the programs is to provide advice and expertise to these countries with the desired outcome being the reduction of losses resulting from piracy of U.S. intellectual property.
The USPTO was engaged on a number of fronts to strengthen IP administration and enforcement abroad. The USPTO hosted the “USPTO/WIPO Asia and Pacific Program for the Judiciary on Intellectual property Rights Enforcement” in Washington, D.C. for members of the appellate and Supreme court judiciary from Asia and the Pacific region on IPR protection and enforcement. The USPTO also organized a program with the Jordan Intellectual Property Association, the International Intellectual Property Institute, the Court of Appeals for the federal Circuit, and George Washington University Law School in Amman, Jordan to celebrate IP week. More than 300 lawyers, government officials, and other interested Jordanians attended this four-day program.
The Visiting Scholars and Enforcement Programs for 2003 provided participants from Bulgaria, Czech Republic, Dominican Republic, Egypt, Republic of Korea, India, Romania, Taiwan, China, El Salvador, Honduras, Nicaragua, Philippines, Turkey, Albania, Algeria, Bosnia, Brazil, Cape Verde, Croatia, Hungary, Jamaica, Kuwait, Macedonia, Morocco, Namibia, Nepal, Serbia/Montenegro, and Tunisia with classroom and hands on study of various aspects of the administration of intellectual property law, patent and trademark examination and copyright protection, enforcement of intellectual property laws, and an opportunity to gain an understanding of the important tool of intellectual property protection as a tool for economic development.
For the second year, a USPTO official served on temporary assignment to the U.S. Embassy in Beijing to assist the embassy and U.S. rights holders on IPR issues in the People’s Republic of China.