Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases

The Federal Register (Vol. 82, No. 12, Thurs., Jan. 19, 2017,pages 6259-6265) contains a final rule regarding changes in requirements for affidavits or declarations of use, continued use, or excusable nonuse in Trademark Cases. The summary follows:

SUMMARY: In order to assess and promote the accuracy and integrity of the trademark register, the United States Patent and Trademark Office (USPTO or Office) amends its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Act. Specifically, under the regulations enacted herein, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part. A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The amended rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/services identified in the registration.

DATES: This rule is effective on February 17, 2017.

FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy\Commissioner for Trademark Examination Policy, by email at TMFRNotices@uspto.gov, or by telephone at (571) 272-8946.

SUPPLEMENTARY INFORMATION:

Purpose: The USPTO revises the rules in parts 2 and 7 of title 37 of the Code of Federal Regulations to allow the USPTO, during the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, 15 U.S.C. 1058, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Trademark Act, 15 U.S.C. 1141k (section 8 or section 71 affidavits), to require the submission of such information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to verify the accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed in the

registration.

This will benefit the public because it will facilitate the USPTO's ability to assess and promote the integrity of the trademark register by encouraging accuracy in the identification of goods/services for which use in commerce or continued use is claimed. 

For more information: https://www.gpo.gov/fdsys/pkg/FR-2017-01-19/html/2017-00317.htm

Accelerated Examination Program - Continue?

The Federal Register (Vol. 82, No.8, Thurs., Jan. 12, 2017, pages 3758-3759) published a comment request asking input about whether the accelerated examination program should continue. The summary follows:

SUMMARY: The United States Patent and Trademark Office (USPTO) is requesting comments from its stakeholders on whether the accelerated examination program should be retained. In an August 16, 2016 notice updating the program to reflect changes in the law and examination practice, the USPTO indicated that the number of accelerated examination requests has been quite low. In particular, in each of the fiscal years 2012-2015, fewer than 250 applications were accepted into the accelerated examination program. Accordingly, the USPTO seeks feedback from its stakeholders on whether the accelerated examination program provides a sufficient benefit to the public to justify the cost of implementation.

Comment Deadline: To be ensured of consideration, written comments must be received on or before March 13, 2017. No public hearing will be held.

Addresses for Comments: Written comments should be sent by electronic mail addressed to AEcomments2016@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments--Patents,Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Pinchus Laufer, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet.

The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site at http://www.uspto.gov. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

For more information: https://www.gpo.gov/fdsys/pkg/FR-2017-01-12/html/2017-00568.htm

More New Ways to Explore Patent Data

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee

Making patent data accessible to the public has been a cornerstone of this agency’s policy since its inception. I’m pleased to announce yet another step we’ve taken at the U.S. Patent and Trademark Office to make such data even easier for the public to understand and use, namely the addition of new features to our patent data visualization and analysis tool, PatentsView. First launched in 2014, PatentsView provides the public a variety of ways to interactively engage, through a web-based platform, the highest-quality patent data available. The underlying database connects 40 years’ worth of information about inventors, their organizations, and their locations in unprecedented ways. PatentsView is a key component of our open data efforts to improve the accessibility, usability, and transparency of U.S. patent data......

To read the complete blog, please go to the Director's Forum Blog.

The Different Types of Patent Applications

Are you an inventor looking to protect your idea but unsure of which application to file?  Then join us as we go over the differences between Utility and Design Patent applications and the advantages of filing a Provisional and/or Non Provisional Utility Patent Application. 

We will also go over the different forms, fees, and formalities required for the respective type of application. This interactive presentation will allow online users to send questions via the chat function to have them answered live!

Date and Time:
January 23, 2017 (Monday)
11 a.m. to 12 p.m. ET

Location:
Webinar

Registration:
Register here(link is externa(external site).
For assistance contact oidevents@uspto.gov

MyUSPTO: Your Personalized Homepage for USPTO Tasks

The USPTO recently launched a new tool to improve how you manage your intellectual property portfolio. With one single sign on, you can now track your patent and trademark applications, receive alerts when they are updated, and get other news from the USPTO. 

MyUSPTO is your personalized homepage and gateway to all your USPTO business needs, and there is no cost to sign up and use the site. MyUSPTO allows you to access your patent and trademark applications in one central location, and also receive email notifications when the status changes on those applications. The site also allows you to save USPTO webpages as bookmarks, so you won’t need to save them separately in your own browser. Additionally, you can learn about current news, upcoming events, and connect with our Facebook and Twitter accounts on the MyUSPTO homepage. The site uses “widgets,” which are small applications that display snippets of important information; aka shortcuts to larger USPTO applications and affiliated sites. The entire site is fully customizable so you can add a little or as much as you prefer.

MyUSPTO simplifies, personalizes, and streamlines the public’s interactions with the USPTO. Future releases will gradually replace many of the credentials you use to sign in to our other systems with one secure, consolidated sign-in. The accounts are designed for individuals; however, future updates will add the ability for organizations to share information between colleagues.

Let us know your suggestions on how we can further improve the site through our MyUSPTO feedback forum on IdeaScale. I invite you to visit MyUSPTO, create an account, and check it out for yourself.  I’m positive that it will be useful for your business needs. You can also visit our “What’s New” page to find out about future updates and improvements.

Read more from the Director's Forum Blog

USPTO Texas Regional Office upcoming events for January 2017

This was posted on 12/16/2016 without the last event which will be held in San Antonio, TX on January 24, 2017.

Monday, January 9, 2017: A Conversation on Claim Interpretation and 112(f) in Dallas, TX
Please join the Dallas Bar Association (DBA) in collaboration with the United States Patent and Trademark Office (USPTO) for A Conversation on Claim Interpretation and 112(f).

Registration: https://www.eventbrite.com/e/a-conversation-on-claim-interpretation-and-112f-tickets-30502734500

Wednesday, January 18, 2017: Meet the Trademark Experts at the Texas Regional Office
Join us at the USPTO Texas Regional Office where we will be hosting an interactive Q&A session with the Trademark Experts.

Registration: https://www.eventbrite.com/e/meet-the-trademark-experts-tickets-30341909468

Thursday, January 19, 2017: Meet the Patent Experts at the Texas Regional Office
The USPTO Texas Regional Office starting in 2017 will begin is 4-class curriculum on patents. Class 1 will be an overview of intellectual property with a focus on patents, EFS-Web and USPTO resources.

Registration: https://www.eventbrite.com/e/meet-the-patent-experts-class-1-tickets-30337550430

Saturday, January 21, 2017: Patents & Trademarks Workshop in Corpus Christi, TX

Have an idea? Then don’t miss this workshop where you can get free advice from registered patent and trademark attorneys and U.S. Patent & Trademark Office examiners who are volunteering their time to serve the community.

Registration: https://www.eventbrite.com/e/community-entrepreneurs-patents-trademarks-workshop-registration-29915750816

Tuesday, January 24, 2017: Protecting Your IP in San Antonio, TX

Join us for a free public seminar for inventors, entrepreneurs, educators, students and legal professionals that covers how to conduct both a preliminary federal trademark and/or US patent search using USPTO databases and a short presentation on asking the right questions of invention promotion firms.

Registration: http://bit.ly/2h5CNcc

For inquiries about the event:
please email texasregionalUSPTOEvents@USPTO.GOV, 

visit us at the https://www.uspto.gov/about-us/uspto-locations/dallas-texas, 

or call us at 469-295-9000.

Extended Missing Parts Pilot Program Extended Until Jan. 2, 2018

According to the Federal Register Notice of Wednesday, Dec. 21, 2016 (Vol. 81, No. 245, pp.93669-93671), the United States Patent and Trademark Office (USPTO) has extended the Extended Missing Parts Pilot Program until January 2, 2018.  See the details in the following summary:

SUMMARY: The United States Patent and Trademark Office (USPTO) implemented a pilot program (Extended Missing Parts Pilot Program) in which an applicant, under certain conditions, can request a 12-month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional application. The Extended Missing Parts Pilot Program benefits applicants by permitting additional time to determine if patent protection should be sought—at a relatively low cost—and by permitting applicants to focus efforts on commercialization during this period. The Extended Missing Parts Pilot Program benefits the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which applicants later decide not to pursue examination. While the USPTO has not yet completed its evaluation of the program, the number of participants in the program over the past several years indicates that there may be sufficient benefits to the patent community. Thus, the USPTO is extending the Extended Missing Parts Pilot Program until January 2, 2018, to allow the USPTO to continue its evaluation of the pilot program. The requirements of the program have not changed.

DATES: Duration: The Extended Missing Parts Pilot Program will run through January 2, 2018. Therefore, any certification and request to participate in the Extended Missing Parts Pilot Program must be filed on or before January 2, 2018. The USPTO may further extend the pilot program (with or without modifications) depending on the feedback received and the continued effectiveness of the pilot program.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272–7727, or Erin M. Harriman, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272–7747. Inquiries regarding this notice may be directed to the Office of Patent Legal
Administration, by telephone at (571) 272–7701, or by electronic mail at PatentPractice@uspto.gov. Alternatively, mail may be addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Eugenia A. Jones.

For more information see https://www.gpo.gov/fdsys/pkg/FR-2016-12-21/pdf/2016-30733.pdf .