Thursday, October 20, 2005

TEAS Manager Craig Morris Reviews PTO Developments at BPLA Trademark Seminar

At the Boston Patent Law Association (BPLA) "Trademark Year in Review: 2005" Seminar yesterday morning, Craig K. Morris, TEAS Project Manager at the USPTO, reviewed recent and upcoming developments concerning the PTO's Trademark Operation. His presentation followed those of Michael Boudett (Foley Hoag LLP) on federal litigation, Pamela S. Chestek (Reebok International Limited) on 1st Circuit litigation, Prof. Stacey L. Dogan (Northeastern University School of Law) on legislative developments, and Douglas R. Wolf (Wolf, Greenfield & Sacks, P.C.) on the TTAB.

Boudett, Chestek, Dogan, Morris, Wolf

Filing statistics: Mr. Morris, with materials prepared by Sharon R. Marsh, Deputy Commissioner for Trademark Examination Policy, provided the latest statistics on PTO trademark filings. In fiscal year 2005, a total of 258,527 applications were filed (an 8.4% increase over FY2004), representing 323,501 classes. The average time between filing and a first action was 6.3 months. For the year, 112,446 marks were registered (143,396 classes), bringing the total number of active registrations to 1.2 million.

Staffing: In FY2005 the PTO employed 358 examining attorneys and it plans to hire 80 more in FY2006. It will also add two new law offices. Approximately 70% of examining attorneys work from home.

TEAS-Plus: Mr. Morris reviewed the requirements for a TEAS-Plus application, and noted that requests for additions to the USPTO "ID Manual" may be sent to Jesse Roberts at Requests should include the name and address of the sender, and should set forth the requested addition in 25 words or less. Additions to the ID Manual are made once per month. In response to an audience question, Mr. Morris indicated that TEAS-Plus applications are not processed any more quickly than other applications.

Design Search Codes: The PTO is undertaking a project to improve the system for assigning design search codes to non-word marks. Postcards and/or e-mails will be sent to applicants and will indicate the proposed codes to be assigned to a particular mark; applicants will then have an opportunity to approve or correct the coding. Requests for correction may be sent to

Rule Changes?: The PTO is considering changes to the Trademark Rules in connection with extensions of time to file a statement of use, in order to allow an applicant to request more than a single 6-month extension at one time. The Office is also considering a change in the procedure for handling requests for reconsideration after final refusal, a cause of considerable delay in processing applications.

Assignments: Mr. Morris pointed out that requests to record assignment documents that are filed electronically via ETAS (Electronic Trademark Assignment System) are processed in one or two days, compared to the five months required to process assignment documents filed by mail. When an assignment document is filed electronically, the records in TRAM, X-Search, TARR, and TESS are automatically updated.

Pdf attachments: The PTO is planning to begin allowing the attachment of pdf files in addition to jpegs, but initially only with regard to TEAS responses to office actions. The target date for this change is December 17, 2005.

As a final note, Cindy Johnson Walden and I, as co-chairs of the Trademarks and Unfair Competition Committee of the BPLA, want to thank our speakers and attendees for a lively and informative seminar. Those of you who did not attend will want to keep an eye out for next year's "Trademark Year in Review."

Text and Photograph Copyright John L. Welch 2005.


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