On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Cohn oversees all aspects of the USPTO’s Trademarks organization including policy, operations and budget relating to trademark examination, registration and maintenance. We spoke in her office on the 10th floor of the Madison Building for approximately 55 minutes.
Commissioner Cohn joined the USPTO in 1983 as a trademark examining attorney and rose through the ranks to managing attorney and group director before becoming Deputy Commissioner for Trademark Operations in 2006. She also served as Acting Chief Administrative Officer for the agency from October 2007 to April 2008 and from May to September 2010.
It has been some time since I have engaged in filing and prosecuting trademark applications, increasingly over the years devoting my practice to patents. With that in mind I reached out to two attorneys at my firm who do a significant amount of trademark work — Mark Malek and Mark F. Warzecha — to ask for suggested questions for Commissioner Cohn.
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Without further ado, here is part 1 of my 2-part interview with Deborah Cohn, USPTO Commissioner for Trademarks.
QUINN: All right, we are now recording. So thank you, Commissioner, very much for taking time to chat with me. One of the things that I would like to talk to you about, maybe to start at least, is your journey to become Commission of Trademarks. To give us sort of the back story. Because right now it seems to me it’s a very historic moment here at the Patent Office that Commissioner of Trademarks, Commission for Patents, and the Deputy Director are all women and this is an agency that historically has been male dominated. So I’d like to get your story. Where did it all begin?
COHN: Well, it all began when I started in 1983 as an examining attorney in trademarks. And so I was here for the historic evolution from basically a very male predominated agency to the one that we have today, which is great. We have a female patent commissioner who is the first female patent commissioner, ever. I’m not the first female trademark commissioner, obviously, there’ve been a number before me. But I started as an examining attorney and I examined in the clothing field and then moved over to the publications area as a manager for ten years. I also was a group director for a time. And then the deputy commissioner for trademark operations. So I’ve been here for 28 years, moved around quite a bit and finally ended up here.
QUINN: And you’ve been commissioner for what, about a year and a half, is that right?
COHN: It’s been a little over a year. I started on December 31st, 2010.
QUINN: Okay. And you’re liking it?
COHN: I love it. It’s a great job. The USPTO has talented and motivated people within Trademarks and outside trademarks, in all of the other areas of the USPTO. When you work with people like that, it can’t help but be enjoyable.
QUINN: Yeah. And let me pick up on that, the talented motivated people because the trademark office seems to be extraordinarily efficient. There is a certain ease of examination. There is a different way that it seems that you deal with the trademark examining attorney. They’re much more, and for lack of a better term, helpful. They come up with suggestions and it seems more like a collaborative process. So I was wondering, what do you attribute the efficiency to? Is it training, is it infrastructure, is it just you’re picking good people?
COHN: I think it’s probably all of those things. The trademark examining attorney job is a highly desirable job. I can’t think of a time when we didn’t have many extremely qualified applicants to choose from. So we have highly qualified and high quality people onboard, and that includes all areas in Trademarks, not just the examination law offices. People like their jobs and they do them well. We do stress that sort of collaboration with customers that you talked about. Our quality guidance includes that aspect of collaboration in certain situations. So for example, with regard to identifications of goods and services, which is a very big part of trademark examination, if an examining attorney objects to something that you’ve submitted an application we expect that they’ll also make a suggestion on how to fix it. We encourage people to pick up the phone and call applicants or to use email to try to resolve issues. We have consistently heard that our customers appreciate that. We want to see things from the customer and user perspective and figure out what works best for them. And our examining attorneys are taught to operate that way.
QUINN: Okay. Because it seems that some of what you just described could be just characterized as an extra burden on the examining corps. Was there a decision made at some point in time that that was the way that the trademark office wanted to go? Because it seems it’s across the board. The examining attorneys do as you suggest make suggestions and then they really do seem to try and foster the application through to as quick a completion as possible.
COHN: I see what you’re saying, but I really don’t look at is as an extra burden; I look at it as part of creating a quality work product. I think we all do. And I believe that the examining attorneys understand that. It helps them, too, because the applicant is more likely to come back with the right answer or a good identification rather than us going back and forth. So it really facilitates examination, and that’s what we want to do. We want to help facilitate the examination so that the case proceeds to publication as quickly as possible.
QUINN: Do you feel that having an examining core of attorneys really facilitates the examination process?
COHN: Absolutely. They are experts in trademark law. And they work up to a level of proficiency that increases their expertise. After they get full signatory authority they’re in charge of the entire case through approval of publication. We do have a quality review system, so there are opportunities for something to be changed later on. But in general the trademark examining attorney has the last word on whether something will be approved for publication and how it will be approved.
QUINN: Okay. Let me pick up on that for a moment. Because some of the attorneys in my office, and it’s been a while since I’ve done any real heavy trademark stuff, so I leaned on some of the attorneys at my office. And lately they said that what they’ve been seeing is the examiners, the trademark examiner attorneys will allow things and then it gets published. And there’s been what one of them characterized as a lot more kind of in his mind looked like specious oppositions. Or people who threatened opposition, and it seems to be happening across the board. So he was wondering if you were hearing that or seeing that, or do you sense that there is an increased interest in opposition practice? And then he wondered whether or not maybe having trademark examiners if they would give a reason for the allowance, whether that may wind up subverting some of this specious opposition practice?
COHN: And I don’t know when he says specious opposition whether he means filing a notice to oppose, most of which ultimately get dropped or there’s a settlement or some kind. Our actual opposition rate is quite low.
QUINN: Right. I think what’s going on is it seems in a lot of cases the initial reaction is to oppose when you look at it and you’re like, oh, my God, you know, this is a totally different areas, the marks are not very similar to start with. And there is that notice file but then it kind of goes nowhere.
COHN: Right. And I don’t know the reason for that; there could be a number of reasons. Obviously, it’s not something that we get involved with directly from the examining perspective, or even from the board perspective.
COHN: To your other point, I don’t think that we would be in a position to further articulate a reason that a mark is published. It’s obvious and apparent that the reason it’s published is because there are no grounds to refuse it and all of the procedural requirements have been met.
QUINN: Okay. Are you satisfied with the searches that are going on? Or would you like to see more time spent on searching and more complete searching? Because I know there’s always a function of resources. So maybe this can go in a number of different ways. I mean, do you feel that on the trademark side you have enough resources to be doing the type of job that you really want to do in every case?
COHN: Yes, I feel we do. Our quality review includes our searches. Not only do we give feedback if we believe that the search is not sufficient, but if the case is still in process the examining attorney is required redo it. Searching is a difficult area and there can always be improvements made, but our data for 2011 showed that there were very few missed citations for cases in process (less than 2%).
QUINN: Okay. Now is there hoteling on the trademark side?
COHN: Oh, yes. We actually started hoteling at the PTO.
QUINN: Oh, you did?
COHN: Yes, we did.
QUINN: See, as a patent attorney I don’t know that, but I probably should. So how does that go?
COHN: Oh, it’s great. It’s a fabulous program and a win/win for the entire agency, including Trademarks. We’ve been doing work at home since 1997 and hoteling since around 2002. So we were the pioneers.
QUINN: Of the whole federal government.
COHN: Well, the IRS had a program before we did. I actually was very closely involved in telework from the very beginning. And so I know that the IRS had a program and we looked at their program. I believe there were a couple of other agencies that had telework, but they weren’t established programs, they were more ad hoc. This is back in the mid-nineties. We looked to the federal guidelines from OPM on establishing a flexible work place and we put together a pilot program. We had two examining attorneys from each law office, a total of eighteen participants. And the requirement was that they share office space, which was a new thing for us because most of the examining attorneys had their own offices. We wanted to pilot it first to see how it worked and what changes might be needed. We had a two year pilot and it worked extraordinarily well. So we gradually expanded. And then around 2002, we started hoteling and we really consolidated. We gave up three floors of our office space, which for our small group was a big deal. And we had people working at home more than coming into the office. So we started down that path. Hoteling’s been working fantastically for us. We have very low attrition since we’ve started it. People find that they can have quality worklives and they don’t want to leave. And of course the ability to maximize our space usage is a major deal, especially as we hire more people.
QUINN: And that was one of the questions that I had for you is your retention rate. Do you know offhand what it is or—
COHN: Yes, our retention rate is quite high. In Fiscal Year 2011, for examining attorneys, we had 3 resignations. We current have 378 examining attorneys on board, so high would say that’s a high retention rate!
QUINN: Okay. So the employees like it, you guys like it. Do you have at this point more folks hoteling than coming into the office or–?
COHN: Within the trademark examining attorney ranks?
COHN: We have close to 90% hoteling.
QUINN: 90% hoteling, wow. So it has not at all reduced production. I mean, these were people who actually were working from home and really, really working from home?
COHN: Oh, yes.
QUINN: Okay. That’s good to know.
COHN: Production and quality are as good as they would be in the office, if not better. I mean, at this point with 90% it’s hard to make a comparison. When we started the program back in 1997 and in the years following, we closely measured and monitored the productivity of people who worked at home and compared it to what it was before they worked at home. We compared it to a control group in the office. We did a very involved study. And we found that productivity went up. There was no question about it. It was a clear win. The quality was the same, which makes sense to us. And a customer service survey showed that our users were happy with the interactions they had with teleworkers.
QUINN: Yeah, that’s great. Now, do they have to live within a certain radius of the patent office, or can they be anywhere?
COHN: They can live anywhere in the continental U.S.
QUINN: Okay. And do they have to come back to the office every so often?
COHN: Some do, but we are working on changing that so that it is very limited. Are you aware of the legislation that was passed that allows us to have a pilot program for this purpose?
COHN: GSA has just approved the program, and we’re launching it right now. We are now able to change the duty station for employees who live remotely so they don’t need to report in regularly and as often. Employees on this program will pay their own way back to headquarters for a very limited number of trips. But with our new technology, we expect the trips to be few and far between.
QUINN: Okay. So now with the duty station, can you describe that a little bit for me? Is that where like another local federal building in their home vicinity–?
COHN: A duty station is simply where the employee is considered to perform their work.
QUINN: Okay. All right. Do you notice, is there any kind of geographic location where these folks who are teleworking gravitate towards? Or is just spread across the country?
COHN: It’s spread across the country, with more people on the east coast. Many of them like to go back to where their families are. There are all kinds of reasons for moving so there’s no particular area that people are gravitating toward.
QUINN: Okay. And the folks on the outside who deal with the trademark examining attorneys, they’re not complaining at all from what I can tell?
COHN: They don’t even know. It’s the same phone number and email address, so where someone is located not really an issue.
QUINN: Now how from a technical standpoint does that work? I mean, can you share that with me or—I mean—
COHN: Yes, I can tell you the phones are VOIP (Voice Over Internet Protocol) so it goes right through the computer. Employees have exactly the same technical tools at home as they do in the office.
QUINN: Right, no, and that’s fine, that’s fine. That was sort of what I was wondering is basically what kind of technology you were using. Which actually is a nice segue into another question that I wanted to ask you about, the software that the trademark office uses. Because you guys paved the way for paperless. And virtually nothing is done in paper any more, right?
QUINN: Or very little?
COHN: We’re trying to get to that point.
QUINN: Well, I can tell you compared to the patent side you guys are light years.
COHN: We still receive some paper, so attorneys or applicants of any type can elect to send us a paper response or paper submissions. For our initial applications, the electronic filing rate is over 98%. So once that electronic application has been filed, then some people do revert back to submitting paper sometimes. Some people still don’t authorize us to send them emails. But I can tell you that right now 75% of our applications that go on to registration or abandonment are processed completely electronically. We keep track of that measure and we’ve got that as an external performance measure, too. We want to keep that number going up.
QUINN: Okay. How does that work? Is there special software that the trademark side has to enable this or is it just—
COHN: We have an online system where people fill out a form and the data is automatically uploaded into our system. Examining attorney upload their office actions onto our trademark document retrieval site which everybody has access to, and an email goes to the applicants notifying them that they have an office action, and including the link.