On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Part 1 of the interview was published yesterday. What follows is the remainder of the interview. We discussed a range of topics in this segment, including average pendency of trademark applications, cease and desist practice and some of the misleading letters sent to trademark owners and applicants from various third-parties that provide dubious publication services.
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QUINN: I wonder why it is that the patent side seems to operate from differently than the trademark side from a technology standpoint. Is it just about the scale of the system?
COHN: Patent and Trademark systems are separate because the requirements are different.
QUINN: Okay. Well, can you give me a sense of what is the scale difference between the trademark office and the patent office?
COHN: Last year we received almost 400,000 new application classes. And we examined about 390,000 applications last year.
QUINN: So virtually everything that came in last year got examined last year?
COHN: Well, our first action pendency is 3.2 months right now. We ended the fiscal year at 3.1 months. So those last three months worth of applications, of course, carried over to the next year. But yes, most applications that came in last year received a first action because we’re only at three months pendency.
QUINN: So that strikes me as about as good as you could get.
COHN: Our target range for first action pendency is 2.5 to 3.5 months. We want to have enough of an inventory to maintain a steady flow of work for our examiners. You don’t want to take the chance of going down to where you run out of work. So that is why 2.5 is the floor and 3.5 is our high point, we don’t want to go above that because then people are having to wait too long to get a first action. We had talked about this with our public advisory committee and they agreed that this was the right target range for first action pendency, so that’s where we’re at.
QUINN: Right. Now, I know why you’re making a distinction between classes and applications. Could you just explain that for those who might be reading this that aren’t as steeped in this system?
COHN: A trademark application may contain one or more classes. There are 45 classes that include different groups of goods and services. So if you file an application you can file it in one class or you can file it more than one class, but the fees are paid per class. We count in terms of classes because each class has to be examined and searched.
QUINN: All right. Now, if I could maybe shift gears a little bit. I have a couple questions about litigation. And I know that the office isn’t specifically involved in this issue. But I do know, and maybe we could start here, is I think it was last year that the trademark office was soliciting information about, I’ll use my word and maybe you could use the better work that fits with what the call was, but about frivolous litigation. And maybe not frivolous litigation, but it was, if I’m recalling properly, about the cease and desist letters.
COHN: Sure, yes.
QUINN: What I refer to as the dime a dozen cease and desist letter that quite frankly a lot of times, and I don’t want to put words in your mouth, I’ll just say what my view is, is, is that they mischaracterize the law, they mischaracterize the facts, and they just try and scare the beejesus out of people who don’t really know any better. I was wondering what the outcome of that search and studying was.
COHN: The Trademark Technical and Conforming Amendments Act of 2010 required us to perform a study with IPEC, the Intellectual Property Enforcement Coordinator connected with the White House. And we requested comments, as you know. Some people expressed the view that you just did that people were over extending. And then other people pointed out that you really do have to protect your rights if you want to maintain your trademark. And so I think one of the issues is where to draw the line. What is over extending and being aggressive to one party may be actually properly protecting rights to another party. And if you don’t protect your rights you stand a chance to lose them. I think one of the issues that we discovered is that sometimes people are not informed enough about trademark rights and what the procedures are, and what the meaning of a cease and desist letter is. One of the recommendations of the study was to investigate reaching out and providing more education, which is what we’re doing right now. We had a meeting on November 29th where we invited representatives from our different user groups.
QUINN: And this is in sort of your round table series?
COHN: We often have roundtables on different topics. We had this meeting as part of our effort to increase our outreach. There were had quite a few people there from different groups and there were a couple of individual attorneys there as well. And everybody agreed that there needs to be more education about safeguarding brands and enforcing trademark rights. But the education needs to reach everybody, not just trademark attorneys. It certainly needs to reach other attorneys. It also needs to reach the public, small businesses, and entrepreneurs. People need to be more aware of what trademark rights and obligations are and what cease and desist letters really mean. At this point, we are convening a working group to further focus our efforts. We’re going to do that in March and will have representatives from these different groups get together and formulate some educational programs.
QUINN: Okay. Is there anything like a trademark helpline like there is on the patent side?
COHN: Yes, our Trademark Assistance Center provides this function.
QUINN: And if somebody were to get this, could they call up the trademark helpline and at least get pointed in a direction, even if it’s just, hey, you really ought to talk to an attorney, or something? I mean, I guess the question here is what is the role of the trademark helpline?
COHN: It’s to give information about filing for a trademark registration. It’s not to give legal advice.
COHN: But their role is to answer questions about the trademark application process, or if somebody is calling about a particular case, to refer them to the examining attorney.
QUINN: Okay. So it’s not sort of like, on the patent side where there’s an inventor helpline. And they don’t give legal advice, but they’ll say, well, maybe you should take a look at—read this form, or here is where our forms are. This is the web page where our fees are. And maybe if you don’t feel comfortable maybe you should get an attorney, or something, you know? Is there anything like that? And may that be a solution?
COHN: I think the role of the Trademark Assistance Center is very similar to what you described.
COHN: But, if someone is asking for legal advice, for example on cease and desist letters, our assistance folks will say, you might want to consult an attorney. I would not suggest that anyone with litigation problems call the trademark assistance center. Their role is clearly limited to the registration process.
QUINN: No. And I guess I wasn’t necessarily suggesting. How do I want to say this? I guess what I’m sort of getting, because sometimes it’s a surprise to me as well, is that people who you think are, I mean, they’re educated people, they’re successful people, they’re business people, certainly all of them are business people on the trademark side. Because to get the trademark you have to be using it in commerce.
QUINN: But when you get that scary letter sometimes it’s like there’s a peeling away of not common sense, but there is the fear become raw. And things that you otherwise may seem in a moment of calm obvious, oh, well, let me call the attorney to help me with this, you know, no longer seem obvious because somebody is threatening your business is the way you see it.
COHN: I understand exactly what you’re saying. So of course the best reaction would be to call a trademark attorney to get some advice about this. What we’re hoping to do is reach some of those people with our educational initiatives and I think the involvement of the outside stakeholder groups is crucial because they will do the legal education. We can’t give legal advice. But they can give information on the best way to handle a cease and desist letter.
QUINN: But sometimes these letters, you know, I look—and I want to be careful here because you know I am very pro property rights. And when you have a trademark you have to take action otherwise you’re gonna—I mean, the law says you’re gonna lose the trademark. And I also am conscious that in any situation the bad actors are typically few in number and give the entirety of the industry a black eye. So that may very well be what’s going on. And maybe I just—see, people send me the really outrageous letters that almost make it sound like, and if you don’t stop immediately we’re going to come to your house and we’re gonna expect you to give your first born son up over to us in sacrifice.
COHN: The only comment I have to that is we think that education about these matters is key. And of course people should always consult their trademark attorney because they’ll have a really good handle on the specifics. I think people sometimes don’t completely understand the scope of somebody else’s trademark registration and rights. For example, a mark doesn’t have to be identical to be infringing on another mark for similar goods or services.
QUINN: Right, right.
COHN: But those misconceptions exist.
QUINN: Yeah, no, that’s certainly true. To be fair that’s exactly—
COHN: There may be some overreaching on occasion, but unfortunately, it seems that the overreaching is getting all the attention.
QUINN: Right. And that’s maybe just the unfortunate reality of the world is is that it is the bad actor who garners all the attention. Which now moving forward into my next question. And it’s not so much litigation related I guess. Although just the other day there was a law firm, [Leeland, Leese and Ellis-38:20] that just sued a company that is sending out—I mean, they’re not bills, they’re not invoices. It says on them that they’re not invoices but they look like a bill or an invoice, and it looks rather official. Offering publication services of the trademark. And it’s to me implying that this is either necessary or to be kind, and generous I think is a very good idea. But the trademark office already does that. You publish the applications, you publish the trademarks, you have an electronic searchable database. And then as all this was going on this week, I finally am getting around after all these years to trademarking IP Watchdog. And I got these two forms that you’re taking a look at here right now from a different company as well. So I just wanted to talk to you. And I know you can’t comment on pending litigation. And I’m not asking you to pick up the banner and run with this for me or for anybody else. But I was wondering what does the office do? I mean, what can the office do if anything about these types of things? Because I can tell you, I was away on a business trip and when I came home and my wife had opened these and she had them for me and she was like, wow, I didn’t know it was that expensive to get a trademark. And I’m like, Honey, this is—we don’t need to do this. This is an opportunist trying to sell us something. And so she may have just wound up paying. I wonder how many people think that.
COHN: Yes. Our examining attorneys do get calls from applicants from time to time complaining about these communications. They might not know right off that this is something that’s not connected with the office. They may think it’s an extra fee that they weren’t anticipating. We ask our examining attorneys and anybody in the office who becomes aware of this to refer them to our Policy Office. We don’t handle the complaints directly at the USPTO but we do contact the FTC who handle these issues and we have been working with them. QUINN: So you guys are aware of this.
COHN: We are very aware of it and we are in continual contact with the FTC.
QUINN: So somebody who gets this—actually, let me maybe ask it this way. Do you guys keep a file of these thing? Like I know on the patent side with the invention promotion companies and complaints, the patent office collects them and keeps them and actually publishes them on the website. Is there anything like that that goes on on the trademark side?
COHN: We wouldn’t publish the actual notices, but we do have warnings on our website and on our filing receipts.
QUINN: Okay. Is there any other kinds of—I don’t want to put words in your mouth, but is there any other kind of thing that you see like this, maybe along these lines that you would pass to the FTC that maybe the user community ought to be made aware of? You know, to look out for things that are going on on the periphery?
COHN: People should look at it very carefully at all correspondence and if there’s ever any question about a fee that you weren’t anticipating, call the examining attorney or the Trademark Assistance Center. We do charge certain fees throughout the process and these are listed on our website. If you see something that surprises you, give us a call.
QUINN: Yeah. And it’s fair to say that the trademark office does not outsource work for the collection of fees, right? So if somebody were to see something that looks official but that the payment is going to an entity other than the USPTO, then that should be maybe a red flag?
QUINN: Okay. So you don’t outsource any of this stuff?
COHN: We do not.
QUINN: Right, who’s going to be the interface. So the trademark office interfaces directly with applicants?
QUINN: And registrants because once you get the registration there is a relationship, really.
COHN: There are maintenance requirements and fees.
QUINN: Right, for the maintenance fees and the follow up and the incontestable status at five years.
QUINN: And so forth.
QUINN: Okay, all right. Now, the last thing we talked about this a little bit, but I just wanted to give you an opportunity to expand a little bit on it would be the round table discussions and the webcasts. And one that I am familiar with is where you were talking about and held a meeting of the stakeholders regarding the disclaimer practice and the potential changes or there were changes overseas and the question was, well, do we want to change our practice. And you convened a round table and you got feedback. Can you give us an idea, the sense of, one, when does something like that get provoked? How does it get decided we’re gonna do a round table on this? How do you accept the feedback? What’s the process for considering it? And if you want to use that as an example, that would be great.
COHN: Again, we do have outreach efforts to discuss various issues and receive feedback. Disclaimers are a big part of our examination process. 30% of the office actions that we issue contain a disclaimer requirement. Secondly, we have heard feedback about consistency surrounding disclaimers. People are unsure when to expect them, unsure when one is required, when one is not required. They have said over the years that examining attorneys may apply the policy inconsistently because it’s not a bright line policy. And so when we saw that other countries were changing and getting rid of their disclaimer practice we wanted to find out how valuable a disclaimer is to a US trademark owner. We really were unsure what our stakeholders were feeling at this particular point in time and whether it would be worthwhile to make changes to our practice or even to talk about or think about eliminating it altogether. And so the only way we’re going to know the answers to these questions is by asking the questions. And so that’s why we wanted to have the discussion. And that is true of other issues that we feel are important enough that we might want to get input from stakeholders on. Another example is a round table we have coming up on February 24th and it concerns identifications of goods and services practices. We’re thinking about restructuring our ID manual. We’re also thinking about making some possible changes to our policy on what we accept and what we don’t accept. And we really want to get some in put on that before we move forward. So it’s a perfect opportunity. Identification of goods and services play a part in every single application; they’re a big issue. So we‘re trying to figure out what the best way forward with ID are and so we feel like the round table is a great way to start.
QUINN: Okay. So that really is the start. You guys have some idea of what maybe you’re thinking about that you’ll put out there. I guess like a lot of times you put these things out in the federal register and then you’ll ask for comments back. It sounds to me like the round table series that you’re describing is very preliminary.
COHN: Preliminary, yes.
QUINN: You have some vague thoughts that maybe we should be doing this and you want to get input before you even work on proposals.
COHN: That’s exactly right. We’re not making decisions at the round table, we’re just seeking input that will help us as we talk about further what we want to do.
QUINN: Okay, all right. Great. Well, that’s really all I have. I really appreciate you taking the time to chat with me. And I look forward to hopefully catching up with you at some of these round table discussions in the future.
COHN: Sure, absolutely. The one on February 24th is open to the public so feel free to come.
QUINN: Okay, great. Well, thank you, Commissioner, I appreciate it.
COHN: Thank you.