Thursday, April 23, 2020

Brief Report on the Trademark Public Advisory Committee (TPAC) Presentation: April 17, 2020

A public meeting of the Trademark Public Advisory Committee (TPAC) was held online on April 17, 2020. The agenda and list of speakers may be found here. Here are the presentation slides. A video of the meeting is available here (click on "TPAC public meeting video" in the left-hand column).

The presentation provides the usual data regarding filings, pendency dates, pending legislative initiatives, the USPTO budget, etc. Note that the August 2019 requirement that every foreign applicant be represented by a US attorney seems to have brought back to earth the number of filings emanating from China. [BTW, a foreign party to an inter partes proceeding must also have US counsel]. There is also a discussion of the USPTO's campaign against phony specimens of use.

The estimable Carl Oppedahl, at his Ant-like Persistence blog, discusses [here] an issue that has caused concern for many trademark practitioners: the current requirement that trademark applicants provide their email addresses, which are publicly viewable. In February, in response to a protest led by Carl, the USPTO proceeded to mask the email address in the "status" tab of TSDR. But the email address continued to be open for data mining in the "documents" tab of TSDR. The applicant's email address also remained available for data mining in other public-facing databases and public APIs (application programming interfaces).

Slide number 15 of the TPAC states that the USPTO "plan[s] to mask the owner email address field in TEAS and TEASi documents viewable in TSDR. This includes submissions viewable in the documents tab, all application programming interfaces (APIs), and PDF downloads."

Carl comments: "[I]f the USPTO does actually fulfill this commitment about thoroughly masking the email address, it will reduce the harm caused by this collection of applicant email addresses."

Read comments and post your comment here.

Text Copyright John L. Welch 2020.


At 9:42 AM, Anonymous Sheila Fox Morrison said...

I attended the TPAC presentation (I was the only participant from the public, I think - I Was only able to go because it was online!), and I asked about the security/protection around the email addresses (even if masked) from hackers and unintentional disclosures and was "assured" that the USPTO was taking measures to protect that information. However, I am not convinced. If our large national retailers and banks (and frankly the IRS) can't keep data from being released why should we expect the USPTO can do better? Furthermore, I asked "why" they need this information for applicants that are represented and I was likewise not super satisfied with the answer. The answer had to do with the need to reach the "hundreds" of applicants that require "show cause" orders because the attorney information appears to be fraudulent. My question is why is the USPTO spending so much time making sure they can reach the applicants for applications that are likely fraudulent anyway. The obligation is on the applicant, and its attorney, to keep contact information up to date with the USPTO and if the applicant (fraudulent or otherwise) fails to do that, then so be it, there may be a loss of rights. I understand that the USPTO is desperately trying to keep the register clear of fraudulent applications and this is commendable and important goal, but they don't seem to fairly balance the meeting of their internal goals against the impact on legitimate applicants for whom these additional measures create risk and cost (more attorney/paralegal time navigating and working around these additional filing requirements).


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