“I have tried to do the right thing even if it was not popular at the time, with the idea that if it was right, then any criticism would ultimately fall away, and everything would work out.” – Mary Boney Denison
On December 31, the United States Patent and Trademark Office’s (USPTO’s) Commissioner for Trademarks, Mary Boney Denison, retired from her position with the agency. Denison joined the USPTO in 2011 as Deputy Commissioner for Trademark Operations and became Commissioner for Trademarks on January 1, 2015. Before joining the USPTO, she practiced law in the area of trademark prosecution and litigation, as a founding partner of Manelli Denison & Selter PLLC in Washington, D.C., from 1996 to 2011, and as a partner of Graham & James LLP for ten years.
The USPTO has not yet named the next Commissioner for Trademarks. Deputy Commissioner for Trademark Operations Meryl Hershkowitz will be acting in the role until the new commissioner is named.
In late December, IPWatchdog freelance contributor Michelle Sara King had the opportunity to interview Denison about her career and her accomplishments at the USPTO. Below, she discusses what she is most proud of, what she could have done better, and provides an update on the Office’s efforts to combat fraudulent trademark filings from China, which has proven to be a major stumbling block for the agency in recent years.
What programs and initiatives have excited you most in your role as Trademark Commissioner?
I have implemented several major initiatives focused on the USPTO’s mission of registering federal trademarks, including:
- Movement towards mandatory electronic filing: The USPTO costs for processing paper filings are more expensive than what the Office charges even though we have raised fees for paper filings. Therefore, electronic filers are in fact subsidizing paper filers. This seems fundamentally unfair and requiring all filings to be electronic will end that subsidy. Further, paper filings can lead to errors as these filings need to be scanned and the optical character scanners cause errors during this process, which can affect the quality of the USPTO’s work and the accuracy of the trademark register. I have been working on moving towards mandatory electronic filing for a long time. I initially conducted outreach to paper filers and consulted with stakeholders about this issue with a focus on addressing their concerns. In 2015, the Office reduced fees for applications where users agreed to stay fully electronic so there would be an incentive for applicants not to file on paper. Then, in 2017, we raised fees for paper filings. In 2018, following consultation with multiple bar groups, the USPTO published a Federal Register notice proposing mandatory electronic filings. In July 2019, we issued the final rule mandating electronic filings (with a few minor exceptions), Changes to the Trademark Rules of Practice To Mandate Electronic Filing; this requirement will be implemented in February 2020. This incremental step approach was taken to ensure all customers understand the mandatory electronic filing requirements.
- USPTO Anti–Counterfeiting Campaign: Counterfeiting is a huge global problem. The USPTO does not have law enforcement powers, but the USPTO does have the ability to attack the demand side. I have been concerned for some time that U.S. consumers do not understand the risks of buying fake goods and I thought that the USPTO needed to step up to get the word out and address this issue. In May 2019, the USPTO entered into a five-year agreement for a nationwide anti-counterfeiting educational campaign with the National Crime Prevention Council (NCPC). We are just concluding the research and plan to focus the campaign on educating teens, tweens and their parents on why not to buy fake. We hope that after the campaign, they will pause before buying goods and, if the deal seems too good to be true, then it will register with them that the product might be a fake and they will not proceed with the purchase.
- Raising the Level of USPTO Customer Service: I was a customer of the USPTO before joining the USPTO as Deputy Commissioner and I wanted to make sure that the customer was at the center of every decision made by the USPTO. I worked to improve the USPTO’s customer service with the goal of every customer touchpoint being clear, consistent, and intuitive. Several years ago, the agency hired a consultant to review our customer experience from the viewpoint of multiple different types of customers including the 35%-40% who are pro se.After discussions with the consultant, Trademarks hired a customer experience administrator, plain language writers, and web strategists and we developed a strategic plan for enhancing the customer experience. Our goal is to continue to enhance our customer engagement including making all of our public facing processes more user friendly and providing opportunities for our customers to provide feedback so we can make targeted improvements. We have overhauled our homepage to ensure that the information provided is easy for all customers to understand and use. Additionally, we provide incentives to recognize USPTO staff for their work including customer service awards, a Customer Service Hall of Fame and employee of the month awards.
- USPTO Mobile Application: We now have a USPTO mobile application where customers can check on any pending or registered marks. The application can be set up to provide updates when there are status changes to your applications. Further, customers can also use the mobile application to access the Trademark Status and Document Retrieval (TSDR) system.
What was your biggest challenge at the USPTO?
My biggest challenge in the past few years has been a rise in fraudulent filings and bad faith behavior by users. These activities include behaviors such as submitting to the Office altered specimens, false claims of use, and false claims of representation and unauthorized changes to applicant’s address.
On July 18, 2019, I testified before the U.S. House of Representatives, Judiciary Committee: Courts, Intellectual Property and the Internet Subcommittee about this issue, as Congress is concerned about the rise of improper trademark submissions and bad faith behavior as well as the challenges of counterfeit goods. I discussed the steps the USPTO has taken and plans to take to help address these important problems. This testimony was part of an ongoing dialogue with Congress about these issues and the USPTO continues to speak and work with the subcommittee about these challenges.
We have taken a number of steps to combat improper filing behaviors. On August 3, the Office implemented the U.S. Counsel Rule requirement which mandated that foreign-domiciled applicants and registrants use U.S. counsel in order to file; we had previously added check boxes on forms so that users would be more likely to read the declarations. Further, we made the post registration proof of use audit permanent. In 2019, we also established a Special Task Force within the Trademarks Business Unit to focus solely on identifying challenges and solutions to these issues. Additionally, for the past two years, we have two USPTO lawyers on detail to the United States Department of Justice doing criminal investigations focused on misleading solicitations.
Can you share updates about the USPTO examiner training to help address fraudulent filings?
The USPTO has released Examination Guide 3-19 Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens. The USPTO has conducted multiple examiner training sessions on specimens. Further, the USPTO is developing educational materials for the USPTO website for users to explain what is meant by use in commerce.
Now that the U.S. Counsel rule has been implemented, have you seen any statistical changes in fraudulent filings to the USPTO?
We implemented the U.S. Counsel rule on August 3, 2019. We started to examine applications filed in August in late October, so it is a little early for the USPTO to say if the number of digitally altered or fake specimens has fallen.
This is what we have seen so far:
- The number of overall applications from China has declined from 11.4% of all filings in fiscal year 2019 to 5.9% in this fiscal year 2020.
- There has been a decrease in pro se applications from China. In July 2019, 74% of applications from China were pro se and in November 2019, only 9% of filings were pro se.
- The filing bases from China are shifting away from use; Intent to use (ITU) applications for the past four years were in the 14% range; use-based applications peaked at 83% in fiscal year 2019 and this year (fiscal year 2020) use basis has declined to 74%.
- There has been a doubling in the increase of Madrid Protocol filings from China.
- Examining attorneys are also issuing more specimen refusals. We have seen a 30% increase in the refusal of specimens from 1614 per week in Q1 of fiscal year 2019 to 2085 in fiscal year 2020.
Has the USPTO implemented technological changes to address fraudulent specimens and fraudulent filings in general?
The USPTO is working on building a searchable database of specimen images to help examiners locate specimens that may be used as pictures in other applications by other owners. We are calling this database Automated Specimens Analysis Program (ASAP). Previously, the USPTO only had a searchable database of marks. The USPTO is currently loading all of the specimen images into the database and the database is being beta-tested.
With mandatory electronic filing set to go into effect in February, the USPTO will be changing the specimen rule which will require more information including that both the date and the URL be included on a website specimen.
What would you have changed at the USPTO if you could have?
I should have pushed earlier and more aggressively for improvements to the IT infrastructure. Any change or improvement that Trademarks wants to make has an IT component and when working with our old legacy system, changes are hard to implement. In order to move forward, we really need to have a 21st century IT system. I credit the current USPTO director, Andrei Iancu, with moving the USPTO significantly forward on that front.
What have you learned from working at the USPTO?
First, I have learned that it is important to take care of your staff. We have a bright and dedicated staff; they need to be able to challenge the most senior leaders and know that you will listen to them, support them, and trust them. They also need to know that you will be their advocate at the highest levels of the organization. I am really proud of the senior management team in Trademarks because they are a bright and kind group who will do anything necessary to help the USPTO accomplish its mission. I am leaving the USPTO in good hands.
Second, it is important to build coalitions inside and out of the USPTO. We are a community and we can achieve the most by working together. I have worked hard to form great relationships with the community including the Trademark Public Advisory Committee (TPAC), bar groups, corporate representatives and customer groups. We use TPAC as our sounding board to get their reaction to new ideas. We welcome questions and ideas from every group, and we enjoy working with our customers to serve their needs.
Third, I have enjoyed working with the international community including the TM-5 group which includes governmental representatives from the five largest trademark offices in the world. It is important for the USPTO to continue to work collaboratively with the TM-5 to help improve trademark systems around the world for our users.
And working at the USPTO has reinforced my father’s words to me, “It pays to be nice to people.”
How have you defined success in your career?
I have tried to do the right thing even if it was not popular at the time, with the idea that if it was right, then any criticism would ultimately fall away, and everything would work out. For example, at the USPTO, we are very focused on achieving our pendency and quality goals because it is a commitment we have made to our users. At the end of fiscal year 2018, I was concerned that we might not meet our pendency goals for fiscal year 2019. As a result, I launched a pendency initiative to help ensure we reached our pendency goals in fiscal year 2019 by requiring that all lawyers in Trademarks handle applications. Although there was initial resistance, everyone got on board, the initiative worked, and we met our pendency goal. We have met our goals for the past 13 years and our customers rely on the USPTO achieving our pendency goals.
What are your predictions for the trademark system globally and the USPTO for 2020 and beyond?
The international collaboration and cooperation will continue, as well as our strong partnerships with stakeholders. The challenges posed by counterfeit goods will continue to get more attention in 2020 and the USPTO will formally launch our five-year anti-counterfeiting campaign with NCPC. Additionally, pursuant to President Trump’s Memorandum on Combating Trafficking in Counterfeit and Pirated Goods, the U.S. government will be issuing a report soon with recommendations that will likely impact our IP strategy both domestically and internationally.
Do you have advice or wishes that you think could improve or change the trademark system globally as well as the USPTO?
My hopes are that:
- The USPTO will continue to work with Congress to support enhancements to the Lanham Act.
- The USPTO and the office’s unions will continue to work together with Congress to make the Telework Enhancement Act Pilot Program permanent (TEAPP).
- The USPTO will work to help educate consumers about the dangers of counterfeit goods through our nationwide campaign with NCPC.
- The USPTO will continue to work with our stakeholders on issues and projects of mutual concern.
- The USPTO will continue to keep eyes on the money, as we are a fee-funded agency.
- The USPTO will continue to keep customers at the center of our work.
- The USPTO will continue to build on the strength of our organization and be open to ideas from our talented, dedicated and skilled employees. We will continue to hold office hours and town halls to be accessible to our employees including our focus to promote engagement and communication.
What are your plans following your retirement?
I am moving to North Carolina where my husband and I have just built a home. I come from a family of architects and I love both art and architecture, so I have enjoyed this creative building project.