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Notice

Notice of the Removal of the Paper Search Collection of Registered Marks That Include Design Elements from Trademark Search Library in Arlington, VA

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Start Preamble

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (“USPTO”) hereby provides notice of the microfilming and removal of the paper search collection of trademark registrations that include design elements from the USPTO's Trademark Search Facility in Arlington, Virginia.

DATES:

Removal of the paper search collection of trademark registrations that include design elements shall be effected beginning no sooner than sixty (60) days from the date of this Notice.

Start Further Info

FOR FURTHER INFORMATION CONTACT:

Cynthia C. Lynch, Office of the Commissioner for Trademarks, 571-272-8742.

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SUPPLEMENTARY INFORMATION:

Background

Under 35 U.S.C. 41(i), the USPTO must maintain a collection of United States trademark registrations for use by the public in paper, microform, or electronic form. No such obligation exists with regard to trademark application files. The provision authorizing an electronic search collection of registered marks was added by section 4804(d)(1) of the American Inventors Protection Act of 1999 (“AIPA”), Title IV, Subtitle B, of Public Law 106-113, 113 Stat. 1501, 1501A-589. Section 4804(d)(2) of the AIPA requires that the USPTO not cease to maintain for use by the public its paper or microform collections of, inter alia, United States trademark registrations, except pursuant to notice and opportunity for public comment, and except where the USPTO Director has first submitted a report to the Committees of the Judiciary of the Senate and the House of Representatives detailing a plan to do so. The report must certify that the implementation of the plan will not negatively impact the public, and must include a “description of the mechanisms in place to ensure the integrity of such collections and the data contained therein, as well as to ensure prompt public access to the most current available information.” Id. By letters dated June 7, 2007, the USPTO submitted the requisite certification and report concerning its paper search collection of trademarks including design elements. The report and certification are currently available on the USPTO Web site at http://www.uspto.gov/​main/​newsandnotices.htm and http://www.uspto.gov/​web/​trademarks/​reports/​reportcongress20070604.htm.

The USPTO currently maintains a searchable electronic database of registered marks and marks in pending applications, as well as text and images of marks in abandoned, cancelled and expired records dating back to 1984. Government insignia protected by U.S. law or by Article 6ter of the Paris Convention, and insignia that various federally and state recognized Native American tribes have identified as their official tribal insignia are also included. Trademark examining attorneys have relied exclusively on the electronic database since before 1990. The database available on the USPTO premises is called X-Search, and is accessible to the public at the USPTO's Public Search Facility in Alexandria, Virginia. On the USPTO Web site, the database is referred to as the Trademark Electronic Search System (“TESS”).

Marks that include design elements are searchable by design codes. A different design coding system is used with the electronic search systems than has been used with the paper collection of trademark registrations. The paper design coding system organizes design marks according to specific designations (such as “trees,” “grotesque humans” or “circles”). Since 2001, these paper search designations (“PSD”) have been used to code registrations, but have not been used to code pending applications.

The electronic design coding system is based on the International Classification of the Figurative Elements of Marks (“Vienna Classification”). The Vienna Classification arises out of a multilateral treaty administered by the World Intellectual Property Organization. It is a numerical classification index that codifies figurative design elements into categories. Each design element in a specific section is assigned a six-digit number. Design marks are coded by identifying the significant design elements and assigning the appropriate codes. The design codes cover all the possible designs that can appear in a trademark, and are used to search design marks. The Vienna Classification codes are applied to incoming applications and have been assigned to existing registrations.Start Printed Page 35430

The USPTO provides a Design Search Code Manual on its Web site, which contains guidance about the scope of the specific codes of the Vienna Classification, cross-references directing the user to related codes, and other explanatory notes and guidelines. The USPTO has recently made significant enhancements to the Design Search Code Manual, including adding new design codes to refine searchability, identifying and re-coding all the current applications or registrations affected by the new design codes, and increasing and improving the examples given for the numerical design codes.

In response to previous USPTO proposals to eliminate its paper search collection of registered marks that include design elements, some members of the public expressed the view that the ability to search both the paper collection and the electronic database provides better, more accurate search results, because if a design coding error is made under the Vienna Classification, the design mark is likely to be found by a paper search using the PSD. The USPTO considered this concern and developed a plan to address it.

In a June 23, 2006, Federal Register Notice (71 FR 36065), the USPTO requested comments on its plan to remove the paper search collection of registered marks that include design elements from the USPTO's search facility in Arlington, Virginia, and replace the collection with an enhanced electronic search system and a microform collection of the paper search collection. The Notice announced the USPTO's plan to develop a new design code field for its TESS and X-Search databases, which will mirror the PSD. Under the announced plan, while the USPTO will maintain the Vienna Classification now used in TESS and X-Search, the USPTO will also code new registrations according to the PSD. This dual coding will permit electronic searching of registered design marks using the Vienna Classification, the PSD, or both. The Notice further stated the USPTO's plan that, upon completion of the development of the new design code system, the USPTO would microfilm the existing paper search collection of registered design marks, then remove the paper collection. The Notice provided that the new design code system would not be applied to the backfile, i.e., to applications filed or registrations issued before the date on which the system is implemented.

Comments and Responses

In response to the June 23, 2006 Notice, the USPTO received a total of nine (9) comments from four intellectual property organizations, three attorneys and law firms, and two individuals. One comment agreed with the plan and complimented the USPTO on its use of technology to offer reliable services to the public. Many comments either voiced no objection to or voiced support for the removal of the paper records, but requested that steps be taken to verify the accuracy of the electronic capture of the records and ensure that implementation of the USPTO's plan would not negatively impact the public. Other comments opposed the removal of the paper search collection. Several comments included suggestions for improving the searchability of marks featuring designs of various types (e.g., three-dimensional design marks, marks featuring colors and shades of color). These suggestions have been referred to the relevant departments of the USPTO involving database search systems. However, as those suggestions do not directly relate to the proposed removal of the paper search collection, no direct response is provided herein. Responses to substantively relevant comments appear below.

Comment 1: Microfilm Access

Some comments expressed concern over the need for sufficient access to microfilm equipment for review of the microform collection, once it is completed.

Response: The Public Search Facility in Alexandria, Virginia (“PSF”) contains ten microfilm reader workstations that enable users to view reels of microfilmed records. Use of such readers is available on a first-come, first-served basis. Usage of these workstations is monitored by PSF staff, and the levels of use suggest that no lack of access problems exist or are likely to arise. However, the PSF has arranged that in the event the use of such readers increases, and reaches certain threshold levels, the PSF will install more readers to meet the demand.

The paper collection has been maintained at a USPTO search facility in Arlington, Virginia, in a separate location from the PSF at the USPTO's main offices in Alexandria, Virginia, where most of the facilities and equipment for public searching are located. Once this microfilming project is complete, and the microfilmed records are relocated to the PSF in Alexandria, all trademark searching may be done in one location.

Comment 2: Design Coding Error Rate

Several comments expressed concerns about design coding errors under the Vienna Classification system in the USPTO's electronic database, and voiced reservations about relying solely on the design coding in the electronic databases.

Response: As an initial matter, the USPTO's plan allows for the same redundant search capabilities as are currently available, with the significant improvement that for future registrations, they will be available through the electronic database to all members of the public, not just those on the premises of the USPTO. The USPTO's plan includes the replication of the PSD in the electronic database for all newly issued registrations. Thus, these records will be coded under both the USPTO version of the Vienna Classification system and the PSD system. The USPTO intends that the coding of all newly issued registrations with the PSD system will be done by the same personnel who have previously coded the paper records. With the continuity of the same staff using the same coding system, the introduction of an electronic format should not negatively impact the accuracy of the coding. Use of the same records found on paper but now on microfilm will provide searchers equivalent resources to those they already use. In addition, all records will continue to be coded under the Vienna Classification as well, providing a second design coding scheme which public searchers may use as part of a dual search strategy. Should an error have occurred with respect to the coding of an image in one system, it is unlikely that the same error would be made in the other system. Thus, search results will have the same level of accuracy as currently produced in a dual search of both electronic and paper records.

Moreover, recent USPTO efforts to improve design coding under the existing Vienna Classification system have improved the quality and searchability of the electronic database. Within the USPTO's Trademark Services Division, the work of all contracted specially trained design coders has been subject to 100% quality review by Federal employees for the past several years. The contracted workers receive training relating to design coding issues. In addition, the USPTO has created eighty (80) new design search codes to allow for greater specificity in identifying and coding designs, has identified all the active applications and registrations affected by the new design codes, and has updated the electronic databases accordingly. The new version of the Design Code Manual featuring these new codes was made available on the USPTO's Web site on January 6, 2007.Start Printed Page 35431

In addition, the USPTO has continued to seek input from applicants whose marks contain design elements, informing them of the design codes applied to their marks and offering the applicants the opportunity to submit corrections or additions to the coding. Specifically, each applicant for a mark that includes design elements receives a notice from the USPTO explaining design coding, explicitly identifying the Vienna Classification design codes assigned to the applicant's mark, and providing detailed instructions on how to request supplements or revisions to the assigned codes. Since November 2005, the USPTO has sent approximately 82,000 such notices. Beginning in July 2007, the USPTO will seek similar input from registrants whose existing registrations are for marks that include design elements. The USPTO reviews proposed corrections from any source that pertain to design codes assigned to live registrations or applications, has designated internal and external e-mailboxes for this purpose, and makes changes where necessary. A notice announcing the procedure for submitting proposed corrections was previously published in the USPTO's Official Gazette and is posted on the USPTO Web site.

Internal review of the quality of the USPTO's design coding indicates that the efforts to improve quality have succeeded. A recent USPTO study reflects a relatively low error rate in design coding under the Vienna Classification system. In the USPTO's May 7, 2003, report concerning the paper public search collections, the USPTO cited a 19% design coding error rate among a random sample of 1009 applications filed between January 2001 and March 2002. To reevaluate the quality of design coding in the wake of the many improvement initiatives undertaken by the USPTO, in 2006, the USPTO conducted recurring random searches of new applications featuring design-coded marks. Review of the accuracy of the codes applied to the marks revealed that only 4.5% of records contained errors relating to significant elements of a mark that would negatively impact the ability to retrieve such a mark during a search for confusingly similar marks. Thus, the USPTO's ongoing efforts have significantly reduced the error rate in design coding.

By the end of 2007, the USPTO will implement an additional quality enhancement to its design coding under its Vienna Classification system. Under the new procedure, upon acceptance of a registrant's section 8 affidavit, the registration file will be referred to the USPTO's design coders, who will review, and revise if necessary, the Vienna Classification design codes assigned to the registration. Upon completion of the review and any revision, the USPTO will notify the registrant of the Vienna Classification codes currently assigned to the registered mark, and provide information about how to request the addition or correction of these design codes.

Comment 3: Uncoded Backfile

Several comments expressed concerns that the plan to code only future electronic records with the PSD system would result in a hindered ability to accurately search the historic records of the backfile.

Response: While the USPTO plans to apply the PSD system only prospectively to electronic records of registered marks, the historic copies of earlier registrations will be retained in microfilm under their originally assigned PSD. Thus, a searcher who wishes to search the backfile records using the PSD will be able to do so through the microfilm collection. The searcher can then also search the electronic database for the more recent registrations coded using the PSD system. Through this process, the search results will be identical to those that would have been retrieved in a search of the paper records. The USPTO notes that no legal obligation compels coding the entire backfile with the new PSD system in the electronic database. The USPTO has determined that the substantial costs and burdens associated with a voluntary undertaking of this nature would outweigh any benefit of providing the service, particularly where the backfile can be searched with the equivalent of the PSD system through the microfilm records.

Comment 4: Requesting Coding Corrections

One comment noted that the USPTO began sending notices to applicants inviting them to correct or add to the design code entries assigned by the Office. The commenter recommended that the USPTO initiate a quality check invitation to owners of all “live” registrations to assist the Office in its quality control.

Response: Beginning in July 2007, the filing receipts for post-registration filings submitted via the Trademark Electronic Application System (“TEAS”) will notify registrants of the opportunity to request additions to or corrections of the Vienna Classification design codes assigned to their registrations. By the end of 2007, the USPTO intends to implement a new procedure whereby, upon acceptance of a registrant's § 8 affidavit, the registration file will be referred to the USPTO's design coders, who will review, and revise if necessary, the design codes assigned to the registration. Upon completion of the review and any revision, the USPTO will notify the registrant of the Vienna Classification codes currently assigned to the registered mark, and provide information about how to request the addition or correction of design codes.

Currently, the USPTO reviews all proposed corrections from any source, regarding pending applications or registered marks, either sent electronically to the USPTO at TMDesignCodeComments@uspto.gov or received at 1-800-786-9199. A notice announcing such was published in the Official Gazette on October 19, 2004, and is posted on the USPTO's Web site.

Comment 5: Accuracy of Microfilming

One comment expressed concern over the accuracy of the USPTO's microfilming efforts, citing an allegation that approximately 10,000 drawings may have been missed and not microfilmed in a previous paper record microfilming project.

Response: The quality and accuracy of the microfilming effort will be overseen by the staff of the PSF. The PSF conducted two microfilming projects in 2006, one of the abandoned trademark application drawing pages and the other of the pending trademark application drawing pages. PSF staff members with trademark expertise have overseen both projects, and quality review inspections have been conducted during each project. Care was taken to ensure that the quality of the contents of the reels was excellent, and film quality has been found to be exceptionally high.

With respect to comprehensiveness of image capture, the comment appears to refer to an incident in one of the projects, where shoes of drawings that had not been removed during the initial retrieval were located. Specifically, 34 out of approximately 8,000 total shoes with approximately 270 drawings per shoe had not been removed initially. However, the oversight was identified while the microfilming project was still in progress, and these drawings were microfilmed and inserted into the correct order. Retrieval and filming of the missing records resulted in no impact on the final product. Thus, although these records were initially overlooked, this oversight was identified and corrected before completion of the project, ensuring Start Printed Page 35432thorough and accurate results for the project.

In order to ensure that the upcoming microfilming project is complete and accurate, the PSF will employ a comprehensive quality review procedure while the project is in progress. The quality review should ensure that all records are microfilmed. Moreover, there will be a significant “grace period” before destruction of the paper records, during which they will be available to the PSF if needed to correct the microfilm.

Comment 6: Marks Under Paris Convention or Native American Tribal Insignia

Several comments referred to the alleged inadequacy of the electronic records with respect to the protected notifications under Article 6ter of the Paris Convention and the notified Native American tribal insignia.

Response: As a threshold matter, the USPTO notes that these comments refer to records that are not registered trademarks, and therefore do not fall within the scope of the paper search collection at issue. Nonetheless, in response to the concern expressed in these comments, the USPTO has undertaken efforts to ensure that its electronic database for such records is complete. A project is nearly finished to load missing images into the Office's image data server to make them available for viewing on X-Search and TESS, and significant progress on the project has already been made. The USPTO notes that the missing images identified by the project were also missing from the paper search collection. Thus far, over 125 missing images have been loaded into the Office's image data server. No paper copies of protected notifications or insignia will be eliminated until the project is complete.

Comment 7: Archiving the Paper Record Annotations

One commenter expressed concern that handwritten annotations made to the paper records of word marks, which may provide assistance in locating intentionally altered spellings or misspellings, have not been reviewed for potential incorporation into the pseudo-mark field in the electronic database.

Response: The USPTO created the pseudo-mark field to improve the accuracy of searches in its electronic databases, but the USPTO notes that no statutory obligation compels the maintenance of this feature. The pseudo-mark field shows the literal equivalent of a pictorial representation of wording in a design mark, and/or spellings that are similar or phonetically equivalent to wording in a word mark. The assignment of pseudo-marks to electronic records is performed by the Trademark Office within the USPTO. PSF staff members regularly make recommendations for pseudo-mark assignments, which may reflect the type of information in the handwritten annotations to the paper records. Moreover, members of the public may also suggest the addition of pseudo-marks. As with the design codes, the USPTO has sought and applied public input regarding the pseudo-mark data in the USPTO database. For example, since April 4, 2006, the USPTO has notified applicants whose marks include a pseudo-mark, to allow them the opportunity to correct or add to the pseudo-mark field. The USPTO has sent approximately 83,600 such notices.

Although the pseudo-mark field provides a useful tool for searching, the USPTO is not required to provide this feature. Thus, a decision not to review an extensive number of documents for potential additions to the pseudo-mark field does not negatively impact the public. The USPTO has determined that the burden associated with this type of nonessential review of each page in the paper search collection, for consideration of all the handwritten notations, is too great. Nonetheless, because the microfilmed records will accurately capture the handwritten notations made on the paper records, the full scope of these notations will be archived for future reference.

Additional Information

As set forth above and in the June 23, 2006 Federal Register Notice, the purpose of the new design coding system is to replicate the ability to search the paper collection using the PSD. Since 2001, no design coding with the PSD has been done for incoming applications in the paper search collection. Rather, design coding with the PSD has only been applied to registrations. Accordingly, in order to replicate the benefits of redundant searching currently available with the paper search collection, the new design coding system need only be applied to new registrations, not to incoming applications. Therefore, the USPTO clarifies that the new system using the PSD will only be applied to registered marks. This suffices to ensure that no negative impact on existing search capabilities will result from the cessation of maintenance of the current paper search collection of registered marks including design elements.

Notice

Accordingly, the USPTO hereby gives notice that upon the completion of development and testing of its new redundant design coding system, but no earlier than sixty (60) days from the date of this Notice, the USPTO will: (1) Begin coding with the new coding system all new registrations of marks that include design elements; (2) stop adding design coded registrations to the paper search collection; and (3) begin microfilming the paper search collection of registered marks that include design elements. When microfilming is complete, the USPTO will remove the paper search collection of registered marks that include design elements. The microform collection will be available to the public in the Public Search Facility at 600 Dulany Street, Alexandria, Virginia. This will ensure that all information currently available in the paper search collection remains available to the public.

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Dated: June 22, 2007.

Jon W. Dudas,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

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[FR Doc. E7-12498 Filed 6-27-07; 8:45 am]

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