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Good afternoon, thank you all for

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attending today's roundtable on

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the Trademark Modernization Act.

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Notice of proposed rulemaking.

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This roundtable is being recorded and

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will be made available for viewing on the

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USPTO website within two to three weeks.

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If you encounter any technical

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difficulties during the Roundtable,

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please email virtual events

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at uspto.gov for assistance.

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If you have questions for the panel,

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please send an email to

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tm_webinar@uspto.gov.

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The panel will answer as many questions

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as possible during today's session.

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Now I will turn it over to the

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Commissioner for trademarks.

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David Gooder to provide opening

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remarks Commissioner Gooder.

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Thanks,

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Tasha good afternoon everyone in a few

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minutes you'll be hearing from Amy Cotton,

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the deputy Commissioner for trademark

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examination policy here at the USPTO.

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Amy is going to take you through the

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proposed rules to implement the Trademark

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Modernization Act of 2020 before she does so.

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However, I wanted to share with you

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a couple of thoughts about the TMA.

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If you haven't already heard,

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you will shortly.

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This year marks the 75th anniversary

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of the enactment of the Lanham Act.

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Our trademark laws did the test of

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time an important amendments over the

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years have been few but significant,

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such as the case with the TMA.

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When the Lanham Act was passed,

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the world was a very different place

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and the challenges we face today

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with regard to the integrity of

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our register and its registrations

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simply wasn't part of the landscape.

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The TMA though,

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is come along at an opportune

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time and and implementing it

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We wanted to do two things differently

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than we've done in the past.

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First,

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we sought comments from stakeholders

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and our customers on their initial

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thoughts about implementation.

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This is before we wrote and published

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the draft so that we could include

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many of these comments in the draft.

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Second,

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we included in this draft a number of

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options for some of the rules and procedures.

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Our thought was that by doing this,

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we will be able to receive productive

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comments in areas where more than

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one good option is possible.

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In this way,

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when the final rule is published.

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We will be confident that the rules

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have been well thought through,

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effective,

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and generally supported by the TM community.

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As I prepared my remarks today,

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my thoughts turned to the protection

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of our trademark register,

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which is one of the bedrocks

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of our trademark ecosystem.

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Quite simply,

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the integrity of our register ensures

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that brand owners are able to protect

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their intellectual property and succeed

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in both the US and global markets.

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It's for this reason that protecting

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the integrity of the US trademark

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register is an will remain for some time.

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One of our top priorities.

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And in that vein,

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we welcome the Trademark Modernization

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Act as we believe it will contribute in

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a significant way towards that goal.

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So enough from me.

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Without further ado,

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I want to pass the mic over to Amy Cotton,

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Amy.

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Thanks Dave, good afternoon

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ladies and gentlemen.

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Delighted to be here with you again

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today as I was back in March when

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we started this process of trying

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to figure out how to implement

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the Trademark Modernization Act.

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I'm here today alongside my

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distinguished colleagues to share

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our plans for implementation.

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I have of course, Commissioner gooder.

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I've got Chief Judge Drudge Rogers

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with me and also Robert Lavash senior

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trademark legal policy advisor to

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help answer your questions today

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then notice of Proposed rulemaking.

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I'm going to call it the the NPRM.

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So if I refer to the NPRM, that's

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that the notice of proposed rule making.

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It's the rule package,

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the the the NPRM issued on May 18th we were

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happy to be a little bit ahead of schedule.

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The comment period is 60 days.

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That means that your written

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formal comments are due to

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theregulations.gov portal by July 19th.

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Again,

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your comments are due by July 19th.

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They must be submitted to

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theregulations.gov portal in order to be

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included in the records of the formal.

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Rulemaking process.

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The NPRM contains proposals that

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amend the existing letter of protest

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rule to indicate that letter protest

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determinations are final and non

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reviewable established Flexibel

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Office Action response periods it

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establish is ex parte expungement

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and reexamination proceedings for

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cancellation of a registration

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when the required use in commerce

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of the registered mark has not

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been made provide for new non use

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ground for cancellation before the

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trademark trial and Appeal board.

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There will package also sets

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fees for petition requesting.

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Institution of ex.

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Parte expungement,

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reexamination proceedings and

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fees for request to extend

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office action response deadlines.

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The rule package also has amendments

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for suspension of USPTO proceedings

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and the rules governing attorney

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recognition in trademark matters,

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and finally,

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a new rule is proposed to address

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procedures regarding court orders

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canceling affected registrations.

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All rules in the NPRM subject to

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change based on the formal comments

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received that you will send us these

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rules will not take effect until the

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date that's indicated in the final

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rule for expungement reexamination.

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Though implementation is required

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by December 27th, 2021.

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For flexible response periods,

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the TMA does not dictate a date of

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implementation and the USPTO has proposed

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in the rule package that it actually

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be delayed six months to June 27,

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2022.

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That will help your docketing system an Rs.

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Any input we received today via

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email or through the folks providing

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comments or questions on line is

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considered informal and will not

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form part of the formal rulemaking

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record unless those comments

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are also submitted in writing

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to federalregulations.gov,

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starting with letters of protest.

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You may remember the USPTO issued

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rules formalized formalizing the letter

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of protest procedures consistent with

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the tma at the end of last year.

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Now we're just tweaking Rule 2.149 to

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mirror the statutory language that any

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determination by the USPTO director,

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whether to include letter protest

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evidence in the record of

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an application shall be final and non

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reviewable and that such determination

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shall not prejudice any parties right to

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to raise that issue or rely on

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that evidence in any other proceeding.

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I would note because I've gotten questions

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on this point that codifying the existing

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letter protest procedure is not resulted

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in any changes to the practices that

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have been in place for many years,

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except for two things.

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One, there's now a fee of $50.00 for a

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letter of protest to cover our costs,

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and also we now have two months in

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which to make a determination on

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whether to send the evidence submitted

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by the protester to the examining

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attorney for consideration.

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But those are the only two changes

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that this rule packaged makes.

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Next I wanted to move on to this

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to the second big bucket in the

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TMA flexibel response period.

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I wanted to point out that the NPRM

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presents one option in the rule text,

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but offers two other options

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on which we also see comments.

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All options would apply to response

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periods in examination as well

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as in post registration.

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However,

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the shortened response period

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would not apply to section 66.

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A Madrid applications. the various

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treaty provisions and procedures in

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the Madrid system for the International

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registration of marks at the World

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Intellectual Property Organization

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would make it very difficult

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for international applicants and

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registrants to meet any of those.

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Shorten response deadlines in

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the United States.

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So we just carved those out so

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we have three options.

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As I said, option one,

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three months response period,

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we're proposing a standard three months

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response period for all office actions,

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extendable one time to the full six months.

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We're proposing an extension

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fee of $125 per request.

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This is not a per class fee,

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but a per request fee.

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Our original thinking was that we

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might wish to propose a short period

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for only those responses to office

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actions that contain simple requirements.

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However,

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it became pretty difficult to

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distinguish which office actions

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would be considered simple and which

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would be more complex without leaving

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it up to an individual examining

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attorney on a case by case basis.

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So a bright line rule seemed easier

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for everyone's docketing system and

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consistent with the intent of the TMA.

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And we have reflected this proposal

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in the Imperium real text.

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Option two is the two phase examination.

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This is explained in the explanatory

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part of the team made the rule package,

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and it proposes two separate response

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periods that could form the basis for

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implementing a two phase examination system.

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The first stage phase would be for a

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formalities examination featuring A 2

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month response period under the TMA,

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though this would have to be

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extendable up to the full six months,

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two months by two months upon

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request and payment of the fee.

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The second phase of examination would be

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for substantive issues and that would

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have a three month response period.

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Also extendable up to the full six months,

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but if you do the math you realize

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that this option actually could result

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in a total increase inpendency

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for a particular application of

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all the extensions were pursued,

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but we are looking at ways to

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enhance examination flexibility

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to handle formalities,

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issue 1st and then handle

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substantive examination separately

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in a second office action.

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The third option is the patent model.

285
00:09:31,440 --> 00:09:32,990
It's also contained in the

286
00:09:32,990 --> 00:09:34,710
explanatory section of the NPRM.

287
00:09:34,710 --> 00:09:36,135
The initial response period in

288
00:09:36,135 --> 00:09:37,990
every case would be two months,

289
00:09:37,990 --> 00:09:39,706
but it could be extended in

290
00:09:39,706 --> 00:09:41,869
increments up to the full six months.

291
00:09:41,870 --> 00:09:43,350
The applicant would have to

292
00:09:43,350 --> 00:09:45,175
file an extension request in a

293
00:09:45,175 --> 00:09:46,625
fee within the response period,

294
00:09:46,630 --> 00:09:48,658
and the extension fees would get

295
00:09:48,658 --> 00:09:50,442
progressively higher as the applicant

296
00:09:50,442 --> 00:09:52,317
requests more time to respond.

297
00:09:52,320 --> 00:09:53,205
So for example,

298
00:09:53,205 --> 00:09:54,975
an extension fee could be $50

299
00:09:54,975 --> 00:09:56,810
to request the third month,

300
00:09:56,810 --> 00:09:58,420
75 for the 4th month,

301
00:09:58,420 --> 00:10:00,020
125 for the 5th month,

302
00:10:00,020 --> 00:10:02,869
and 150 when the full six months

303
00:10:02,869 --> 00:10:03,683
is requested.

304
00:10:03,690 --> 00:10:05,045
Now the application would be

305
00:10:05,045 --> 00:10:06,790
abandoned if the deadline is missed

306
00:10:06,790 --> 00:10:08,158
without an extension request,

307
00:10:08,160 --> 00:10:10,246
but of course to revive.

308
00:10:10,250 --> 00:10:12,090
The petitioner must include the

309
00:10:12,090 --> 00:10:13,562
applicable extension fee depending

310
00:10:13,562 --> 00:10:15,564
on when the petition is filed

311
00:10:15,564 --> 00:10:17,139
after the initial miss deadline.

312
00:10:17,140 --> 00:10:18,814
So we're looking for comments on

313
00:10:18,814 --> 00:10:20,716
which of these three options would be

314
00:10:20,716 --> 00:10:22,839
most useful to you and to the USPTO,

315
00:10:22,840 --> 00:10:24,394
or if you have further options

316
00:10:24,394 --> 00:10:25,430
that you're interested in,

317
00:10:25,430 --> 00:10:26,978
you can submit those in your

318
00:10:26,978 --> 00:10:27,752
comments as well.

319
00:10:29,860 --> 00:10:31,981
Now we're going to move on to

320
00:10:31,981 --> 00:10:34,240
the third big bucket in the TMA,

321
00:10:34,240 --> 00:10:37,866
which is the non use cancellation mechanisms.

322
00:10:37,870 --> 00:10:40,103
The proposed that we may propose new

323
00:10:40,103 --> 00:10:41,450
proceedings to cancel registrations

324
00:10:41,450 --> 00:10:44,130
for non use and we are proposing the

325
00:10:44,130 --> 00:10:46,065
procedures that would implement those

326
00:10:46,065 --> 00:10:47,990
the first proceeding is expungement.

327
00:10:47,990 --> 00:10:50,153
The target of these proceedings is a

328
00:10:50,153 --> 00:10:53,227
mark in a section 144 or 66 registration.

329
00:10:53,230 --> 00:10:56,128
So that's a use based a Paris based or

330
00:10:56,128 --> 00:10:58,421
Madrid based registration that is never

331
00:10:58,421 --> 00:11:02,700
been used on some or all of the goods or

332
00:11:02,700 --> 00:11:04,544
services identifying the registration.

333
00:11:04,550 --> 00:11:07,226
The petition to request institution of

334
00:11:07,226 --> 00:11:09,399
expungement proceedings may be filed

335
00:11:09,399 --> 00:11:11,660
in the window of time between year

336
00:11:11,660 --> 00:11:13,652
three and year 10. Post registration.

337
00:11:13,652 --> 00:11:15,938
The TMA also provides that expungement

338
00:11:15,938 --> 00:11:18,631
is a new ground for cancellation at

339
00:11:18,631 --> 00:11:20,940
the trademark trial and Appeal Board.

340
00:11:20,940 --> 00:11:23,082
However, the timing is a bit different

341
00:11:23,082 --> 00:11:24,829
for a TTAB claim.

342
00:11:24,830 --> 00:11:26,720
The claim is available at anytime after

343
00:11:26,720 --> 00:11:28,760
the first three years post registration.

344
00:11:28,760 --> 00:11:30,968
It does not cutoff at year 10 like

345
00:11:30,968 --> 00:11:32,680
the proceedings before the director.

346
00:11:32,680 --> 00:11:35,278
You can bring those claims at

347
00:11:35,278 --> 00:11:37,010
anytime after three years.

348
00:11:37,010 --> 00:11:39,047
Please note that this new claim of

349
00:11:39,047 --> 00:11:40,852
expungement does not affect any other

350
00:11:40,852 --> 00:11:43,160
already available non use claim at the TTAB.

351
00:11:43,160 --> 00:11:44,918
That is abandonment or non use.

352
00:11:44,920 --> 00:11:47,668
Nor does it impact the timing

353
00:11:47,668 --> 00:11:49,042
of those claims.

354
00:11:49,050 --> 00:11:51,546
A further point on the timing of expungement

355
00:11:51,546 --> 00:11:53,900
petitions TMA also provides it for

356
00:11:53,900 --> 00:11:55,570
the two years following implementation.

357
00:11:55,570 --> 00:11:57,934
A petition for expungement may be

358
00:11:57,934 --> 00:11:59,510
filed against the registration

359
00:11:59,571 --> 00:12:01,106
that's over 10 years old.

360
00:12:01,110 --> 00:12:03,012
The intent of this provision was

361
00:12:03,012 --> 00:12:04,904
to allow for clearance of older

362
00:12:04,904 --> 00:12:06,878
Deadwood off the register for a two

363
00:12:06,878 --> 00:12:09,069
year period following implementation,

364
00:12:09,070 --> 00:12:12,174
but it is a short window in which

365
00:12:12,174 --> 00:12:14,805
any registration may be subject to

366
00:12:14,805 --> 00:12:17,020
a proceeding for expungement before

367
00:12:17,020 --> 00:12:18,240
the director.

368
00:12:18,240 --> 00:12:20,123
Now the second new type of proceeding

369
00:12:20,123 --> 00:12:21,640
is called REexamination.

370
00:12:21,640 --> 00:12:23,070
The target of these proceedings

371
00:12:23,070 --> 00:12:25,858
is a mark in a Section 1 use based

372
00:12:25,858 --> 00:12:27,796
registration that was not in use

373
00:12:27,866 --> 00:12:29,356
as of the relevant date.

374
00:12:29,360 --> 00:12:31,467
Now what's the relevant date for a

375
00:12:31,467 --> 00:12:33,069
Section 1A application filing date?

376
00:12:33,070 --> 00:12:34,816
Presuming that it was never amended

377
00:12:34,816 --> 00:12:36,780
to a section 1B filing basis.

378
00:12:36,780 --> 00:12:38,616
The relevant date for purposes of

379
00:12:38,616 --> 00:12:40,776
a intent to use a 1B application

380
00:12:40,776 --> 00:12:43,175
is a later of the filing date of

381
00:12:43,175 --> 00:12:45,408
the amendment to allege use or the

382
00:12:45,408 --> 00:12:47,802
expiration of time to file the

383
00:12:47,802 --> 00:12:50,095
statement of use. Now the timing.

384
00:12:50,095 --> 00:12:52,045
The window here petition to request

385
00:12:52,045 --> 00:12:53,309
institution of reexamination.

386
00:12:53,310 --> 00:12:56,341
It must be filed in the first

387
00:12:56,341 --> 00:12:58,960
five years after registration.

388
00:12:58,960 --> 00:13:00,910
For both expungement, and reexamination.

389
00:13:00,910 --> 00:13:02,850
Once the window for requesting

390
00:13:02,850 --> 00:13:04,014
proceedings is closed,

391
00:13:04,020 --> 00:13:06,736
depending on which one you're looking at,

392
00:13:06,740 --> 00:13:09,068
these tools are no longer available

393
00:13:09,068 --> 00:13:10,232
before the director.

394
00:13:10,240 --> 00:13:10,626
However,

395
00:13:10,626 --> 00:13:13,328
any interested party can always bring a

396
00:13:13,328 --> 00:13:16,466
claim at the TTAB or Federal District Court.

397
00:13:16,470 --> 00:13:18,162
For non use.

398
00:13:18,162 --> 00:13:20,418
Our abandonment or expungement

399
00:13:20,418 --> 00:13:21,546
is appropriate.

400
00:13:21,550 --> 00:13:21,901
Alright,

401
00:13:21,901 --> 00:13:24,358
the NPRM lays out the matching

402
00:13:24,358 --> 00:13:27,466
procedures that will be followed in both

403
00:13:27,466 --> 00:13:29,334
expungement and reexamination proceedings.

404
00:13:29,340 --> 00:13:31,482
Now we are proposing a $600

405
00:13:31,482 --> 00:13:32,910
per class petition fee.

406
00:13:32,910 --> 00:13:35,360
The fee is designed to strike the

407
00:13:35,360 --> 00:13:37,333
balance between cost recovery and

408
00:13:37,333 --> 00:13:39,473
providing a less expensive alternative

409
00:13:39,473 --> 00:13:41,990
to a contested TTAB proceeding.

410
00:13:41,990 --> 00:13:44,538
Now any person may file a petition

411
00:13:44,538 --> 00:13:46,823
requesting that either expungement or

412
00:13:46,823 --> 00:13:49,079
examination proceedings be instituted.

413
00:13:49,080 --> 00:13:50,508
Only one registration per

414
00:13:50,508 --> 00:13:51,936
petition will be allowed.

415
00:13:51,940 --> 00:13:54,264
The basis for the petition must either

416
00:13:54,264 --> 00:13:56,220
be expungement or re examination,

417
00:13:56,220 --> 00:13:59,356
but not both in the same petition.

418
00:13:59,360 --> 00:14:01,130
Combining them into one petition,

419
00:14:01,130 --> 00:14:03,345
creates IT difficulties and could

420
00:14:03,345 --> 00:14:05,117
be problematic for examination

421
00:14:05,117 --> 00:14:07,102
because the evidence for the

422
00:14:07,102 --> 00:14:08,952
different bases will be different.

423
00:14:08,960 --> 00:14:11,235
So, but even if a petition for

424
00:14:11,235 --> 00:14:12,210
expungement and participation

425
00:14:12,271 --> 00:14:14,166
for reexamination on the same

426
00:14:14,166 --> 00:14:15,682
registration were filed separately,

427
00:14:15,690 --> 00:14:17,598
the director can consolidate

428
00:14:17,598 --> 00:14:19,983
review of the multiple petitions

429
00:14:19,983 --> 00:14:22,050
against the same registration.

430
00:14:22,050 --> 00:14:24,394
Now the TMA TMA says any person can

431
00:14:24,394 --> 00:14:26,891
file so the statute itself makes clear

432
00:14:26,891 --> 00:14:29,347
that there should be no standing

433
00:14:29,347 --> 00:14:31,527
requirement for the petitioner.

434
00:14:31,530 --> 00:14:33,360
The petitioner is not anonymous

435
00:14:33,360 --> 00:14:35,549
because the petition must be filed

436
00:14:35,549 --> 00:14:37,635
through Tees and that means that it

437
00:14:37,635 --> 00:14:40,128
must be filed through uspto.gov account.

438
00:14:40,130 --> 00:14:40,430
Also,

439
00:14:40,430 --> 00:14:42,230
the petitioner must provide a domicile

440
00:14:42,230 --> 00:14:44,360
address so that we can determine if

441
00:14:44,360 --> 00:14:45,835
the petitioner is foreign domiciled

442
00:14:45,835 --> 00:14:47,680
and thus would need to include the

443
00:14:47,680 --> 00:14:50,340
designation of a US attorney in the petition.

444
00:14:50,340 --> 00:14:52,415
If an attorney is designated,

445
00:14:52,420 --> 00:14:54,758
the petition must include the attorney name,

446
00:14:54,760 --> 00:14:56,936
postal address, email address,

447
00:14:56,936 --> 00:14:58,568
and bar information.

448
00:14:58,570 --> 00:14:58,946
Now,

449
00:14:58,946 --> 00:15:01,954
if a petition is filed but it's incomplete.

450
00:15:01,960 --> 00:15:03,868
The USPTO may issue a 30 day letter

451
00:15:03,868 --> 00:15:05,887
to address the missing information.

452
00:15:05,890 --> 00:15:08,466
Now I wanted to circle back to the

453
00:15:08,466 --> 00:15:10,386
anonymity question that I do get a lot.

454
00:15:10,390 --> 00:15:12,166
I wanted to note the USPTO is

455
00:15:12,166 --> 00:15:13,624
not currently proposing that the

456
00:15:13,624 --> 00:15:15,224
petitioner be required to identify

457
00:15:15,224 --> 00:15:16,850
the real party in interest.

458
00:15:16,850 --> 00:15:19,559
Now we're doing this for two reasons.

459
00:15:19,560 --> 00:15:19,957
1st,

460
00:15:19,957 --> 00:15:22,339
If the petitioner establish is a

461
00:15:22,339 --> 00:15:24,368
prime official case of non use.

462
00:15:24,370 --> 00:15:26,290
It makes no difference for purposes

463
00:15:26,290 --> 00:15:28,700
of adhering to the intent of the TMA,

464
00:15:28,700 --> 00:15:29,728
who that petitioner is,

465
00:15:29,728 --> 00:15:32,100
or whom he or she is representing.

466
00:15:32,100 --> 00:15:33,900
The ultimate goal of the proceedings

467
00:15:33,900 --> 00:15:36,108
is to clear Deadwood from the Register,

468
00:15:36,110 --> 00:15:38,510
regardless of who requested those

469
00:15:38,510 --> 00:15:38,990
proceedings.

470
00:15:38,990 --> 00:15:39,377
Secondly,

471
00:15:39,377 --> 00:15:41,699
once the petitioner filed the petition,

472
00:15:41,700 --> 00:15:45,585
the petitioner is out of the process.

473
00:15:45,590 --> 00:15:47,126
To hold the hold the

474
00:15:47,126 --> 00:15:48,514
petitioner accountable in the context

475
00:15:48,514 --> 00:15:50,422
of these proceedings for failing to

476
00:15:50,422 --> 00:15:51,861
provide accurate information as to

477
00:15:51,861 --> 00:15:53,181
the real party in interest would

478
00:15:53,181 --> 00:15:54,698
require the petitioner to remain a

479
00:15:54,698 --> 00:15:56,033
party to the proceeding throughout,

480
00:15:56,040 --> 00:16:00,045
but that was not the intent of the TMA.

481
00:16:00,050 --> 00:16:00,375
Instead,

482
00:16:00,375 --> 00:16:02,325
we believe that a petitioner who

483
00:16:02,325 --> 00:16:04,034
uses the proceedings to harass

484
00:16:04,034 --> 00:16:05,378
registrants could be sanctioned

485
00:16:05,378 --> 00:16:07,619
outside the context of the proceedings.

486
00:16:07,620 --> 00:16:08,390
That is,

487
00:16:08,390 --> 00:16:10,315
through the sanction authority of

488
00:16:10,315 --> 00:16:12,210
the Commissioner for trademarks.

489
00:16:12,210 --> 00:16:14,255
The Commissioner for trademarks may

490
00:16:14,255 --> 00:16:15,891
sanction individuals making submissions

491
00:16:15,891 --> 00:16:18,039
to the USPTO TL for improper purpose.

492
00:16:18,040 --> 00:16:20,000
So if the USPTO or to discover

493
00:16:20,000 --> 00:16:21,344
through our ongoing investigations

494
00:16:21,344 --> 00:16:23,314
for fraudulent and bad face

495
00:16:23,314 --> 00:16:25,452
submissions that a petition was

496
00:16:25,452 --> 00:16:26,790
abusing these proceedings,

497
00:16:26,790 --> 00:16:29,040
the USPTO could preclude submissions

498
00:16:29,040 --> 00:16:31,226
in any proceeding before the USPTO

499
00:16:31,226 --> 00:16:33,086
by the petitioner in the party

500
00:16:33,090 --> 00:16:35,540
The petitioner may be representing

501
00:16:35,540 --> 00:16:37,500
and could terminate anyuspto.gov

502
00:16:37,500 --> 00:16:39,790
account created by that bad actor.

503
00:16:39,790 --> 00:16:41,554
As an example of the ethical duty

504
00:16:41,554 --> 00:16:43,541
of candor that applies to any party

505
00:16:43,541 --> 00:16:45,305
practicing before the USPTO would be

506
00:16:45,360 --> 00:16:47,220
violated and subject to sanctions if

507
00:16:47,220 --> 00:16:49,122
the petitioner did not disclose all

508
00:16:49,122 --> 00:16:51,108
material facts known that would enable

509
00:16:51,108 --> 00:16:53,248
the office to make an informed decision

510
00:16:53,248 --> 00:16:55,420
whether or not the facts were adverse.

511
00:16:55,420 --> 00:16:57,240
This would of course include situations where

512
00:16:57,240 --> 00:16:58,985
the petitioner knew that a mark was in use,

513
00:16:58,990 --> 00:17:02,430
but the petition alleges that it was not.

514
00:17:02,430 --> 00:17:05,958
Now, once it's complete petition is filed.

515
00:17:05,960 --> 00:17:07,496
We're going to send a courtesy

516
00:17:07,496 --> 00:17:08,930
email notice of the filing.

517
00:17:08,930 --> 00:17:10,730
To the registrar tan the

518
00:17:10,730 --> 00:17:12,170
registrants attorney of record,

519
00:17:12,170 --> 00:17:13,940
as appropriate.

520
00:17:13,940 --> 00:17:15,858
The petition and evidence will also be

521
00:17:15,858 --> 00:17:17,276
uploaded immediately into the trademark

522
00:17:17,276 --> 00:17:19,180
status and document retrieval T SDR system,

523
00:17:19,180 --> 00:17:22,018
and they will be made public.

524
00:17:22,020 --> 00:17:24,309
No response from the registrant to the

525
00:17:24,309 --> 00:17:27,115
filing of the petition will be accepted

526
00:17:27,115 --> 00:17:29,755
and less and until proceedings are instituted.

527
00:17:29,760 --> 00:17:32,910
Now the petition must include a verified

528
00:17:32,910 --> 00:17:35,770
statement that identifies the elements of

529
00:17:35,770 --> 00:17:38,160
the petitioners investigation of nonuse.

530
00:17:38,160 --> 00:17:39,540
Where did you search?

531
00:17:39,540 --> 00:17:40,920
How did you search?

532
00:17:40,920 --> 00:17:44,223
When did you search and what did you find

533
00:17:44,223 --> 00:17:48,018
as to each source of information relied on?

534
00:17:48,020 --> 00:17:50,044
Now the reasonable of the search and the

535
00:17:50,044 --> 00:17:51,890
number and the nature of the sources.

536
00:17:51,890 --> 00:17:53,560
The petitioner must search will

537
00:17:53,560 --> 00:17:55,230
be determined case by case.

538
00:17:55,230 --> 00:17:57,813
The evidence of non use that thought

539
00:17:57,813 --> 00:17:59,638
will necessarily differ depending on

540
00:17:59,638 --> 00:18:02,246
the nature of the goods in the services.

541
00:18:02,250 --> 00:18:03,705
At issue an,

542
00:18:03,705 --> 00:18:06,130
their relevant channels of trade

543
00:18:06,130 --> 00:18:07,100
and advertising.

544
00:18:07,100 --> 00:18:09,308
The sources must be reasonably accessible,

545
00:18:09,310 --> 00:18:13,174
and ones that can be publicly disclosed.

546
00:18:13,180 --> 00:18:14,420
Appropriate sources of evidence

547
00:18:14,420 --> 00:18:15,660
and information for reasonable

548
00:18:15,660 --> 00:18:16,630
investigation may include,

549
00:18:16,630 --> 00:18:19,456
but are not limited to, those you see here.

550
00:18:19,456 --> 00:18:21,026
State and federal trademark records,

551
00:18:21,030 --> 00:18:21,722
Internet websites,

552
00:18:21,722 --> 00:18:24,490
and other media likely to or believed to

553
00:18:24,553 --> 00:18:26,954
be owned or controlled by the registrant.

554
00:18:26,960 --> 00:18:29,222
Internet web sites on other online

555
00:18:29,222 --> 00:18:31,156
media and publications where the

556
00:18:31,156 --> 00:18:33,346
relevant goods and services would likely

557
00:18:33,346 --> 00:18:35,519
be advertised or offered for sale.

558
00:18:35,520 --> 00:18:37,338
Print sources and webpage is likely

559
00:18:37,338 --> 00:18:38,965
to contain reviews or discussions

560
00:18:38,965 --> 00:18:41,107
of the relevant goods and services.

561
00:18:41,110 --> 00:18:43,553
Records are filing made with or of

562
00:18:43,553 --> 00:18:46,622
actions taken by any state or federal

563
00:18:46,622 --> 00:18:49,057
business registration or Regulatory agency.

564
00:18:49,060 --> 00:18:50,308
The registrants marketplace activities,

565
00:18:50,308 --> 00:18:50,620
including,

566
00:18:50,620 --> 00:18:51,234
for example,

567
00:18:51,234 --> 00:18:53,076
any attempts to contact the registrar

568
00:18:53,076 --> 00:18:55,278
or purchase the relevant goods or services,

569
00:18:55,280 --> 00:18:56,875
records of litigation or administrative

570
00:18:56,875 --> 00:18:58,151
proceedings reasonably likely to

571
00:18:58,151 --> 00:18:59,629
contain evidence on the registrants.

572
00:18:59,630 --> 00:19:01,660
Use or non use of the registered

573
00:19:01,660 --> 00:19:03,060
mark and of course,

574
00:19:03,060 --> 00:19:04,580
any other reasonably accessible

575
00:19:04,580 --> 00:19:06,100
source with information establishing

576
00:19:06,100 --> 00:19:08,476
that the mark was never in used in

577
00:19:08,476 --> 00:19:09,857
commerce for expungement or was

578
00:19:09,857 --> 00:19:11,824
not in commerce as of the relevant

579
00:19:11,824 --> 00:19:14,310
date reexamination or on or on or

580
00:19:14,310 --> 00:19:16,230
in connection with the relevant

581
00:19:16,314 --> 00:19:17,898
goods and services.

582
00:19:17,900 --> 00:19:19,930
Now the director is the gatekeeper to

583
00:19:19,930 --> 00:19:21,767
the process and decides whether the

584
00:19:21,767 --> 00:19:23,874
prima facie case is made based on

585
00:19:23,938 --> 00:19:25,803
the evidence and available evidence

586
00:19:25,803 --> 00:19:27,668
and information in the petition.

587
00:19:27,670 --> 00:19:29,782
And also the USPTO electronic

588
00:19:29,782 --> 00:19:31,190
record of the involved

589
00:19:31,265 --> 00:19:33,498
registration. The director has the

590
00:19:33,498 --> 00:19:35,208
authority to institute a proceeding

591
00:19:35,208 --> 00:19:37,535
without a petition if the director has

592
00:19:37,535 --> 00:19:39,570
evidence establishing a prima facie case.

593
00:19:39,570 --> 00:19:41,255
So there's petition based and there's

594
00:19:41,255 --> 00:19:42,266
director initiated proceedings.

595
00:19:42,270 --> 00:19:43,302
So, for example,

596
00:19:43,302 --> 00:19:45,022
the director could institute a

597
00:19:45,022 --> 00:19:46,926
proceeding on different goods and

598
00:19:46,926 --> 00:19:48,846
services in the same registration

599
00:19:48,846 --> 00:19:51,190
that's already the subject of a

600
00:19:51,190 --> 00:19:52,327
petition initiated proceeding.

601
00:19:52,330 --> 00:19:54,424
Of course, the director can consolidate

602
00:19:54,424 --> 00:19:56,200
review of both proceedings in

603
00:19:56,200 --> 00:19:57,790
that's on that same registration.

604
00:19:57,790 --> 00:19:59,930
The consolidated proceedings are related

605
00:19:59,930 --> 00:20:02,522
parallel proceedings that may include both

606
00:20:02,522 --> 00:20:04,487
expungement in re examination grounds.

607
00:20:04,490 --> 00:20:06,632
Now a prima facie case requires

608
00:20:06,632 --> 00:20:08,685
only that a reasonable predicate

609
00:20:08,685 --> 00:20:10,917
concerning nonuse be established.

610
00:20:10,920 --> 00:20:13,314
If a prima facie case is established,

611
00:20:13,320 --> 00:20:14,764
the director must institute

612
00:20:14,764 --> 00:20:16,569
proceedings and if proceedings are

613
00:20:16,569 --> 00:20:18,118
instituted just as an examination,

614
00:20:18,120 --> 00:20:20,885
the burden of proving non used by

615
00:20:20,885 --> 00:20:23,135
proponents of the above evidence

616
00:20:23,135 --> 00:20:25,099
lies with the director.

617
00:20:25,100 --> 00:20:26,934
If a prima facie case is not

618
00:20:26,934 --> 00:20:28,640
established in the petition itself,

619
00:20:28,640 --> 00:20:30,670
the director will not institute

620
00:20:30,670 --> 00:20:31,888
petition based proceedings.

621
00:20:31,890 --> 00:20:34,058
The director will not add evidence to a

622
00:20:34,058 --> 00:20:35,680
deficient position petition to establish

623
00:20:35,680 --> 00:20:37,738
a Primefaces case and institute proceedings.

624
00:20:37,740 --> 00:20:38,330
But however,

625
00:20:38,330 --> 00:20:38,625
director,

626
00:20:38,625 --> 00:20:40,395
if the director has his own

627
00:20:40,395 --> 00:20:41,440
evidence and establish,

628
00:20:41,440 --> 00:20:42,980
is a prima facie case.

629
00:20:42,980 --> 00:20:44,792
The director can institute proceedings on

630
00:20:44,792 --> 00:20:46,670
his own initiative without that petition.

631
00:20:49,170 --> 00:20:50,542
Once proceedings are instituted,

632
00:20:50,542 --> 00:20:52,600
an office action will issue that

633
00:20:52,654 --> 00:20:54,289
directs the registrant to respond

634
00:20:54,289 --> 00:20:56,217
within two months with proof of

635
00:20:56,217 --> 00:20:57,876
use of the mark on the challenge,

636
00:20:57,880 --> 00:20:59,398
goods or services.

637
00:20:59,398 --> 00:21:01,928
The director's decision to institute

638
00:21:01,928 --> 00:21:04,463
proceedings based on a prima facie

639
00:21:04,463 --> 00:21:06,629
case is final and non reviewable.

640
00:21:06,630 --> 00:21:08,670
With two months to respond,

641
00:21:08,670 --> 00:21:11,120
the registrant is subject to the USPS

642
00:21:11,120 --> 00:21:13,160
rules on electronic correspondence.

643
00:21:13,160 --> 00:21:15,152
The requirement to correspond

644
00:21:15,152 --> 00:21:17,144
electronically with the office

645
00:21:17,144 --> 00:21:19,086
domicile address and representation

646
00:21:19,086 --> 00:21:21,708
by US Council of Foreign Domiciled.

647
00:21:21,710 --> 00:21:23,250
The registrar has three options

648
00:21:23,250 --> 00:21:24,790
for his or her response.

649
00:21:24,790 --> 00:21:25,566
Number one,

650
00:21:25,566 --> 00:21:27,894
provide evidence of use #2 excusable

651
00:21:27,894 --> 00:21:30,384
non use in certain circumstances and

652
00:21:30,384 --> 00:21:33,400
or three deletion is the third option.

653
00:21:33,400 --> 00:21:36,130
Starting with providing evidence of use.

654
00:21:36,130 --> 00:21:37,765
The registrant must provide such

655
00:21:37,765 --> 00:21:39,130
evidence of use, information,

656
00:21:39,130 --> 00:21:39,890
exhibits, affidavits,

657
00:21:39,890 --> 00:21:42,170
or declarations that may be necessary

658
00:21:42,170 --> 00:21:44,243
to rebut the prima facie case by

659
00:21:44,243 --> 00:21:46,033
a stablishing that the required use

660
00:21:46,033 --> 00:21:47,947
in commerce has been made honoring

661
00:21:47,947 --> 00:21:50,130
connection with the goods and services

662
00:21:50,130 --> 00:21:53,370
at issue is required by the Lanham Act.

663
00:21:53,370 --> 00:21:54,102
Any documented,

664
00:21:54,102 --> 00:21:54,468
sorry?

665
00:21:54,468 --> 00:21:57,030
Any documentary evidence of use need not

666
00:21:57,096 --> 00:21:59,598
be specimens of use in section 18 they act,

667
00:21:59,600 --> 00:22:01,862
but they must be consistent with

668
00:22:01,862 --> 00:22:04,142
the definition of use in commerce

669
00:22:04,142 --> 00:22:06,236
in section 45 in Lanham Act.

670
00:22:06,240 --> 00:22:07,528
Specimens are typically what

671
00:22:07,528 --> 00:22:08,494
will be provided,

672
00:22:08,500 --> 00:22:10,642
but there may be situations where where

673
00:22:10,642 --> 00:22:12,700
the specimens are no longer available,

674
00:22:12,700 --> 00:22:14,932
and in these cases the registrant

675
00:22:14,932 --> 00:22:16,964
can provide additional evidence and

676
00:22:16,964 --> 00:22:18,888
explanations supported by declaration.

677
00:22:18,890 --> 00:22:20,346
Resubmitting this same exact

678
00:22:20,346 --> 00:22:22,166
specimens already contained in the

679
00:22:22,166 --> 00:22:24,109
USPTO TRS records without additional

680
00:22:24,109 --> 00:22:26,009
evidence will likely be insufficient

681
00:22:26,009 --> 00:22:27,916
to rebut the prima facie case.

682
00:22:27,920 --> 00:22:30,524
Keep in mind that the office already

683
00:22:30,524 --> 00:22:33,310
reviewed the USPS records to determine

684
00:22:33,310 --> 00:22:35,438
whether to institute proceedings.

685
00:22:35,440 --> 00:22:37,640
Testimonial evidence may be submitted,

686
00:22:37,640 --> 00:22:40,915
but should be supported by

687
00:22:40,915 --> 00:22:42,880
corroborating documentary evidence.

688
00:22:42,880 --> 00:22:43,416
For expungement,

689
00:22:43,416 --> 00:22:45,292
the proof of use must show that

690
00:22:45,292 --> 00:22:47,184
the use of curd before the filing

691
00:22:47,184 --> 00:22:48,232
date of the petition.

692
00:22:48,240 --> 00:22:49,323
For re examination.

693
00:22:49,323 --> 00:22:52,593
The proof of use must show that the use

694
00:22:52,593 --> 00:22:55,257
of curd on or before the relevant date.

695
00:22:55,260 --> 00:22:58,438
Now on the second option for response,

696
00:22:58,440 --> 00:22:59,346
excusable nonuse.

697
00:22:59,346 --> 00:23:02,064
This only applies to section 44,

698
00:23:02,070 --> 00:23:04,340
Paris or section 66 registrants.

699
00:23:04,340 --> 00:23:08,169
In the context of an expungement proceeding.

700
00:23:08,170 --> 00:23:10,156
Excusable Nonuse is a treaty entitlement

701
00:23:10,156 --> 00:23:12,190
for Paris and Madrid restaurants,

702
00:23:12,190 --> 00:23:15,110
and does not apply to Section 1 registrants.

703
00:23:15,110 --> 00:23:17,300
It only it only applies an

704
00:23:17,300 --> 00:23:18,760
expungement because section 44

705
00:23:18,824 --> 00:23:20,780
and 66 registrants did not have

706
00:23:20,780 --> 00:23:22,544
to establish use in examination

707
00:23:22,544 --> 00:23:24,494
as a condition for registration

708
00:23:24,494 --> 00:23:26,424
that would now be questioned

709
00:23:26,424 --> 00:23:27,880
in a reexamination proceeding.

710
00:23:30,000 --> 00:23:33,006
The third response option is deletion.

711
00:23:33,010 --> 00:23:35,075
A registrant may delete some or all

712
00:23:35,075 --> 00:23:37,466
of the challenge goods and services in

713
00:23:37,466 --> 00:23:39,266
his response with immediate effect.

714
00:23:39,270 --> 00:23:42,245
A registrant may not amend an identification

715
00:23:42,245 --> 00:23:45,108
in the context of these proceedings.

716
00:23:45,110 --> 00:23:46,922
Actually we received a question ahead

717
00:23:46,922 --> 00:23:48,918
of time about whether any regulatory

718
00:23:48,918 --> 00:23:51,102
allowances would be made for registrants

719
00:23:51,102 --> 00:23:52,841
and expungement or reexamination proceeding

720
00:23:52,841 --> 00:23:55,396
who are affected by a mistake made by

721
00:23:55,396 --> 00:23:57,352
counsel in the initial application when

722
00:23:57,352 --> 00:23:59,049
identifying the goods and services.

723
00:23:59,050 --> 00:24:01,314
So a fact pattern where this might be

724
00:24:01,314 --> 00:24:03,884
an issue is if the proof of use offered

725
00:24:03,884 --> 00:24:06,116
does not match the identification of

726
00:24:06,116 --> 00:24:08,346
goods and services being challenged,

727
00:24:08,350 --> 00:24:10,275
maybe because the applicant initially

728
00:24:10,275 --> 00:24:12,583
made the mistake in identifying the

729
00:24:12,583 --> 00:24:14,491
goods and services in his application

730
00:24:14,491 --> 00:24:15,899
or the attorney did so.

731
00:24:15,900 --> 00:24:18,588
And they never fixed that mistake.

732
00:24:18,590 --> 00:24:20,216
Again, the registrant may not amend

733
00:24:20,216 --> 00:24:22,461
the ID to match the proof of use

734
00:24:22,461 --> 00:24:24,117
in the context of these expungement

735
00:24:24,177 --> 00:24:25,559
reexamination proceedings.

736
00:24:25,560 --> 00:24:25,877
Remember,

737
00:24:25,877 --> 00:24:28,096
these are supposed to be short proceedings,

738
00:24:28,100 --> 00:24:30,636
so we can't have a lot of additional

739
00:24:30,636 --> 00:24:31,270
issues added.

740
00:24:31,270 --> 00:24:33,489
However, there is a way forward here.

741
00:24:33,490 --> 00:24:35,440
The registrant could file a section

742
00:24:35,440 --> 00:24:37,292
seven amendment to narrow the ID

743
00:24:37,292 --> 00:24:38,762
within the scope of the original

744
00:24:38,762 --> 00:24:40,786
ID and notified that amendment to

745
00:24:40,786 --> 00:24:42,626
the expungement or re examination

746
00:24:42,626 --> 00:24:43,632
examiner for consideration.

747
00:24:43,632 --> 00:24:44,580
If the register.

748
00:24:44,580 --> 00:24:46,782
If the restaurant did not already

749
00:24:46,782 --> 00:24:49,560
do so prior to the proceedings.

750
00:24:49,560 --> 00:24:49,836
However,

751
00:24:49,836 --> 00:24:51,492
keep in mind that we cannot

752
00:24:51,492 --> 00:24:53,081
guarantee that the section Seven

753
00:24:53,081 --> 00:24:54,489
amendment would be accepted.

754
00:24:54,490 --> 00:24:57,292
We would not suspend the expungement

755
00:24:57,292 --> 00:24:59,160
reexamination proceedings while the

756
00:24:59,228 --> 00:25:01,496
Section 7 examination was going on.

757
00:25:01,500 --> 00:25:03,685
But we will expedite consideration

758
00:25:03,685 --> 00:25:05,433
of the Section 7.

759
00:25:05,440 --> 00:25:05,877
Remember,

760
00:25:05,877 --> 00:25:08,936
we want to keep these proceedings fast,

761
00:25:08,940 --> 00:25:10,672
efficient and low cost.

762
00:25:10,672 --> 00:25:13,887
So I hope that answers the question

763
00:25:13,887 --> 00:25:17,597
that was posed prior to this roundtable.

764
00:25:17,600 --> 00:25:19,865
If the registrant's response proposals

765
00:25:19,865 --> 00:25:22,130
deletion but this deletion occurs

766
00:25:22,193 --> 00:25:24,491
while the registration is also subject

767
00:25:24,491 --> 00:25:26,462
to a post registration examination

768
00:25:26,462 --> 00:25:29,045
of the Section 8 or 71 declaration,

769
00:25:29,050 --> 00:25:34,350
a deletion fee of $250 per class will be due.

770
00:25:34,350 --> 00:25:36,597
I want to note specifically that we

771
00:25:36,597 --> 00:25:38,744
are not proposing to charge a deletion

772
00:25:38,744 --> 00:25:41,103
fee in the context of the expungement

773
00:25:41,103 --> 00:25:42,969
or reexamination proceedings.

774
00:25:42,970 --> 00:25:45,077
But if the deletion in there in

775
00:25:45,077 --> 00:25:46,620
the registrar's response occurs at

776
00:25:46,620 --> 00:25:48,360
the same time that the maintenance

777
00:25:48,360 --> 00:25:49,810
filing is being examined,

778
00:25:49,810 --> 00:25:51,987
then we will charge the deletion fee.

779
00:25:51,990 --> 00:25:53,856
I know that's a little confusing,

780
00:25:53,860 --> 00:25:56,030
but you can understand that we want.

781
00:25:56,030 --> 00:25:58,578
We don't want folks to avoid the

782
00:25:58,578 --> 00:26:00,101
post registration deletion fee

783
00:26:00,101 --> 00:26:01,921
simply because there's the subject

784
00:26:01,921 --> 00:26:03,877
of an expungement or reexamination

785
00:26:03,877 --> 00:26:06,037
proceeding at the same time.

786
00:26:06,040 --> 00:26:07,565
So deletion can occur in

787
00:26:07,565 --> 00:26:08,480
the registrar's response,

788
00:26:08,480 --> 00:26:11,240
but a registrant may also delete goods and

789
00:26:11,240 --> 00:26:13,520
services through a section seven amendment.

790
00:26:13,520 --> 00:26:15,236
The section Seven amendment must be

791
00:26:15,236 --> 00:26:16,868
notified by the registrant in his

792
00:26:16,868 --> 00:26:18,170
or her response to the expungement

793
00:26:18,170 --> 00:26:19,210
or re examination.

794
00:26:19,210 --> 00:26:21,015
Examiner said that they know

795
00:26:21,015 --> 00:26:22,459
that it was made.

796
00:26:22,460 --> 00:26:22,742
Also,

797
00:26:22,742 --> 00:26:24,152
a registrant may delete goods

798
00:26:24,152 --> 00:26:25,831
and services just by voluntarily

799
00:26:25,831 --> 00:26:27,807
surrendering the entire registration.

800
00:26:27,810 --> 00:26:29,530
This surrender must also be

801
00:26:29,530 --> 00:26:31,250
notified to the expungement or

802
00:26:31,317 --> 00:26:33,367
examination examiner in the registrar's

803
00:26:33,367 --> 00:26:36,310
response for that response to be acceptable.

804
00:26:36,310 --> 00:26:39,862
Now, ultimately, if one of these

805
00:26:39,862 --> 00:26:42,230
three responses is acceptable.

806
00:26:42,230 --> 00:26:44,610
The proceedings terminate immediately

807
00:26:44,610 --> 00:26:47,585
and no cancellation order issues.

808
00:26:47,590 --> 00:26:50,418
No response by the registrar means immediate

809
00:26:50,418 --> 00:26:52,902
cancellation for the goods and services

810
00:26:52,902 --> 00:26:55,308
on which the proceeding was instituted.

811
00:26:55,310 --> 00:26:57,572
Now a petition for reinstatement is

812
00:26:57,572 --> 00:26:59,963
available if the failure to respond

813
00:26:59,963 --> 00:27:02,003
was due to extraordinary circumstances

814
00:27:02,003 --> 00:27:04,429
and the typical time periods for

815
00:27:04,429 --> 00:27:05,937
filing a petition supply.

816
00:27:05,940 --> 00:27:07,648
Now, if you are filing the petition

817
00:27:07,648 --> 00:27:09,335
to reinstate the response to the

818
00:27:09,335 --> 00:27:10,539
outstanding office action would

819
00:27:10,539 --> 00:27:12,098
also be required at that time,

820
00:27:12,100 --> 00:27:14,984
along with the petition and the fee.

821
00:27:14,990 --> 00:27:15,718
This project,

822
00:27:15,718 --> 00:27:18,630
this process should not be used to prolong

823
00:27:18,701 --> 00:27:21,366
the registrant's overall response period.

824
00:27:21,370 --> 00:27:24,051
The MPR M adjust the due diligence

825
00:27:24,051 --> 00:27:26,166
monitoring rules such that registrants

826
00:27:26,166 --> 00:27:28,836
must monitor the status of their

827
00:27:28,836 --> 00:27:31,606
registration at least every two months

828
00:27:31,606 --> 00:27:34,318
after notice of Institution of proceedings.

829
00:27:34,320 --> 00:27:36,340
Now if the response is

830
00:27:36,340 --> 00:27:37,956
unacceptable or it's incomplete,

831
00:27:37,960 --> 00:27:40,615
a final action issues with

832
00:27:40,615 --> 00:27:43,270
a 2 month response period.

833
00:27:43,270 --> 00:27:43,880
Now, actually,

834
00:27:43,880 --> 00:27:45,710
we've asked for comments the in

835
00:27:45,710 --> 00:27:47,328
the Imperium on whether we should

836
00:27:47,328 --> 00:27:49,399
issue a 30 day letter for a timely

837
00:27:49,399 --> 00:27:50,579
bona fide attempted response

838
00:27:50,579 --> 00:27:52,042
to the first office action,

839
00:27:52,042 --> 00:27:54,016
but which omits some matter of compliance,

840
00:27:54,020 --> 00:27:58,115
so we'd like to hear your views on that.

841
00:27:58,120 --> 00:28:00,296
But I wanted to go back to the

842
00:28:00,296 --> 00:28:02,638
issue of deletions and flag two

843
00:28:02,638 --> 00:28:04,798
issues for consideration as you

844
00:28:04,798 --> 00:28:06,769
prepare your formal comments.

845
00:28:06,770 --> 00:28:09,304
The MPR EM request comments on whether

846
00:28:09,304 --> 00:28:12,265
a registrant who fails to respond to the

847
00:28:12,265 --> 00:28:14,929
First Office action should have his or

848
00:28:14,929 --> 00:28:17,293
her registration flagged for later audit.

849
00:28:17,300 --> 00:28:19,529
Post registration audit.

850
00:28:19,530 --> 00:28:22,092
This means that from a best practices

851
00:28:22,092 --> 00:28:23,540
perspective not responding to

852
00:28:23,540 --> 00:28:25,286
an office action and just simply

853
00:28:25,286 --> 00:28:27,732
trying to allow a deletion to occur

854
00:28:27,732 --> 00:28:28,863
without affirmatively responding

855
00:28:28,863 --> 00:28:31,392
to delete the challenge goods and

856
00:28:31,392 --> 00:28:33,712
services that that practice would

857
00:28:33,712 --> 00:28:36,188
no longer really be an option.

858
00:28:36,190 --> 00:28:38,014
Our thought in asking for comments

859
00:28:38,014 --> 00:28:39,555
about this audit processes that

860
00:28:39,555 --> 00:28:41,169
a registrant who simply does not

861
00:28:41,169 --> 00:28:42,645
respond may have bigger problems

862
00:28:42,645 --> 00:28:44,175
in his or her registration,

863
00:28:44,180 --> 00:28:45,956
for which evidence of non use

864
00:28:45,956 --> 00:28:46,844
is not available.

865
00:28:46,850 --> 00:28:48,866
But in fact the mark was not in

866
00:28:48,866 --> 00:28:50,930
use for more goods and services

867
00:28:50,930 --> 00:28:53,174
in the registration that that then

868
00:28:53,246 --> 00:28:54,989
were originally challenged.

869
00:28:54,990 --> 00:28:57,070
If we target it for later on it,

870
00:28:57,070 --> 00:28:59,174
we can find out if the rest of

871
00:28:59,174 --> 00:29:00,684
the registration that was not

872
00:29:00,684 --> 00:29:02,224
challenged in the preceding holds

873
00:29:02,224 --> 00:29:04,595
up under for further scrutiny via

874
00:29:04,595 --> 00:29:05,867
post registration examiners.

875
00:29:05,870 --> 00:29:08,374
But we are aware that such a policy

876
00:29:08,374 --> 00:29:10,642
could raise another issue for foreign

877
00:29:10,642 --> 00:29:13,000
domiciliaries who may wish to not

878
00:29:13,070 --> 00:29:15,230
respond to an office action because

879
00:29:15,230 --> 00:29:18,110
they don't want to have to get US

880
00:29:18,110 --> 00:29:20,270
Council in order to affirmatively respond.

881
00:29:20,270 --> 00:29:22,406
They might prefer to just let

882
00:29:22,406 --> 00:29:24,201
the challenge goods services fall

883
00:29:24,201 --> 00:29:26,308
away and avoid having to hire an

884
00:29:26,308 --> 00:29:28,696
attorney to make that deletion or

885
00:29:28,696 --> 00:29:29,986
surrender the registration.

886
00:29:29,990 --> 00:29:32,340
And but they might want

887
00:29:32,340 --> 00:29:34,690
to avoid the later audit.

888
00:29:34,690 --> 00:29:36,568
So we're looking for comments on

889
00:29:36,568 --> 00:29:38,143
whether we should provide for

890
00:29:38,143 --> 00:29:39,715
a way for a foreign domiciled,

891
00:29:39,720 --> 00:29:41,724
domiciled registrant to be able to

892
00:29:41,724 --> 00:29:43,858
respond to the office action and

893
00:29:43,858 --> 00:29:46,072
simply delete the goods and services

894
00:29:46,072 --> 00:29:48,067
without having US Council to do so.

895
00:29:48,070 --> 00:29:50,513
Now the final action in an expungement

896
00:29:50,513 --> 00:29:52,324
proceeding will include the examiner's

897
00:29:52,324 --> 00:29:54,094
decision in that registration that

898
00:29:54,094 --> 00:29:56,350
the goods and services that were

899
00:29:56,350 --> 00:29:58,612
challenged that the mark the registration

900
00:29:58,612 --> 00:30:00,775
should be canceled for each goods

901
00:30:00,775 --> 00:30:02,990
or service for which the mark,

902
00:30:02,990 --> 00:30:04,916
as determined to have never been

903
00:30:04,916 --> 00:30:07,101
used in commerce or for which

904
00:30:07,101 --> 00:30:09,176
excusable nonuse was not established,

905
00:30:09,180 --> 00:30:11,418
or for non compliance with any

906
00:30:11,418 --> 00:30:13,320
requirements under Rule 2.11 US

907
00:30:13,320 --> 00:30:15,010
Council rule under Rule 2.23.

908
00:30:15,010 --> 00:30:17,572
Failure to provide an email address

909
00:30:17,572 --> 00:30:18,853
for electronic correspondence.

910
00:30:18,860 --> 00:30:20,801
Or rule 2.189.

911
00:30:20,801 --> 00:30:24,683
Failure to provide a domicile address?

912
00:30:24,690 --> 00:30:26,615
The final action for reexamination

913
00:30:26,615 --> 00:30:28,540
proceeding includes the decision to

914
00:30:28,599 --> 00:30:30,513
cancel the registration for each good

915
00:30:30,513 --> 00:30:32,508
or service for which the mark was

916
00:30:32,508 --> 00:30:34,358
not in use on or before the relevant

917
00:30:34,358 --> 00:30:36,514
date or for non compliance with the

918
00:30:36,514 --> 00:30:38,419
same rules that I just mentioned.

919
00:30:38,420 --> 00:30:41,390
2.112 point 2/3 and 2.189.

920
00:30:41,390 --> 00:30:43,364
The registrant must respond to the

921
00:30:43,364 --> 00:30:45,143
final action with the examiner's

922
00:30:45,143 --> 00:30:47,943
decision to cancel with a request for

923
00:30:47,943 --> 00:30:49,918
reconsideration and a notice of appeal.

924
00:30:49,920 --> 00:30:50,170
Now,

925
00:30:50,170 --> 00:30:52,420
if there is no response to the final action,

926
00:30:52,420 --> 00:30:54,376
the USP Tia will terminate proceedings

927
00:30:54,376 --> 00:30:56,025
and order cancellation of the

928
00:30:56,025 --> 00:30:57,470
goods and services that issue.

929
00:30:57,470 --> 00:30:59,396
A petition for reinstatement is available,

930
00:30:59,400 --> 00:31:02,640
but only for an extraordinary situation.

931
00:31:02,640 --> 00:31:04,428
But if the request for reconsideration,

932
00:31:04,430 --> 00:31:06,218
it contains acceptable proof of use,

933
00:31:06,220 --> 00:31:08,068
we will terminate proceedings.

934
00:31:08,068 --> 00:31:08,530
Otherwise,

935
00:31:08,530 --> 00:31:10,140
the examiner's decision to cancel

936
00:31:10,140 --> 00:31:12,103
is appealed to the trademark trial

937
00:31:12,103 --> 00:31:12,997
and Appeal Board,

938
00:31:13,000 --> 00:31:16,318
and the regular board timelines will apply.

939
00:31:16,320 --> 00:31:16,612
Now,

940
00:31:16,612 --> 00:31:18,364
there is an estoppel provision in

941
00:31:18,364 --> 00:31:20,566
the TMA so that goods and services

942
00:31:20,566 --> 00:31:22,462
for which use in commerce has

943
00:31:22,523 --> 00:31:24,488
already been established may not

944
00:31:24,488 --> 00:31:26,453
be subject to further expungement

945
00:31:26,460 --> 00:31:27,714
or reexamination proceedings.

946
00:31:27,714 --> 00:31:30,640
But of course there's a nuans here.

947
00:31:30,640 --> 00:31:32,615
If a registration was subject

948
00:31:32,615 --> 00:31:34,195
to an expungement proceeding,

949
00:31:34,200 --> 00:31:36,972
where proof of used was provided as

950
00:31:36,972 --> 00:31:39,459
to the challenge, goods and services,

951
00:31:39,459 --> 00:31:41,191
no further expungement proceedings

952
00:31:41,191 --> 00:31:43,410
on those same identical goods

953
00:31:43,410 --> 00:31:45,545
and services may be instituted.

954
00:31:45,550 --> 00:31:45,894
However,

955
00:31:45,894 --> 00:31:46,926
further reexamination proceedings

956
00:31:46,926 --> 00:31:49,378
on those same goods or services are

957
00:31:49,378 --> 00:31:51,073
not barred because the reexamination

958
00:31:51,073 --> 00:31:52,429
proceedings involve the question

959
00:31:52,482 --> 00:31:53,890
of whether the mark was in use as

960
00:31:53,890 --> 00:31:55,108
of a particular relevant date.

961
00:31:55,108 --> 00:31:57,110
So the proof of use relied on

962
00:31:57,167 --> 00:31:58,727
to defend against an expungement

963
00:31:58,727 --> 00:32:00,605
proceeding might not be the same

964
00:32:00,605 --> 00:32:02,685
proof of use you would need to defend

965
00:32:02,685 --> 00:32:04,261
against the reexamination proceeding,

966
00:32:04,261 --> 00:32:07,693
which is tide to the relevant date on

967
00:32:07,693 --> 00:32:10,393
which the mark was supposed to be in use.

968
00:32:10,400 --> 00:32:12,297
Now I think it bears noticing that

969
00:32:12,297 --> 00:32:14,208
the TMA istopover visions do not

970
00:32:14,208 --> 00:32:15,938
apply to subsequent board proceedings,

971
00:32:15,940 --> 00:32:16,837
in other words.

972
00:32:16,837 --> 00:32:18,631
Even if a registration is subject

973
00:32:18,631 --> 00:32:20,750
to an expungement or examination

974
00:32:20,750 --> 00:32:22,506
proceeding before the director,

975
00:32:22,510 --> 00:32:24,140
that registration may still be

976
00:32:24,140 --> 00:32:25,444
challenged at the TTA.

977
00:32:25,450 --> 00:32:27,406
Be on a claim of expungement,

978
00:32:27,410 --> 00:32:29,366
abandonment or non use as appropriate.

979
00:32:31,680 --> 00:32:33,300
As for the pending proceedings,

980
00:32:33,300 --> 00:32:34,840
we cannot institute expungement proceedings

981
00:32:34,840 --> 00:32:36,860
on the same goods and services.

982
00:32:36,860 --> 00:32:39,541
If an expungement proceeding on those same

983
00:32:39,541 --> 00:32:41,950
goods and services is already pending.

984
00:32:41,950 --> 00:32:44,064
Like likewise, we will not institute either

985
00:32:44,064 --> 00:32:46,159
an expungement or examination proceeding.

986
00:32:46,160 --> 00:32:48,230
If a reexamination proceeding is already

987
00:32:48,230 --> 00:32:50,730
pending on those same goods and services,

988
00:32:50,730 --> 00:32:53,061
we will deny the later filed petition

989
00:32:53,061 --> 00:32:55,584
unless it happens to cover goods and

990
00:32:55,584 --> 00:32:58,112
services not already subject, not already.

991
00:32:58,112 --> 00:33:01,328
The subject of an instituted proceeding.

992
00:33:01,330 --> 00:33:02,682
Now expungement and reexamination

993
00:33:02,682 --> 00:33:04,372
proceedings in the notice of

994
00:33:04,372 --> 00:33:05,908
Proposed Rulemaking are included.

995
00:33:05,910 --> 00:33:08,634
Now among the types of proceedings

996
00:33:08,634 --> 00:33:11,334
for which suspension of action by

997
00:33:11,334 --> 00:33:14,134
the office or the TTB is authorized.

998
00:33:14,140 --> 00:33:16,498
The notice of Proposed Rulemaking also

999
00:33:16,498 --> 00:33:19,521
proposes to amend the rules to reflect

1000
00:33:19,521 --> 00:33:21,357
our current suspension practice.

1001
00:33:21,360 --> 00:33:21,980
So generally,

1002
00:33:21,980 --> 00:33:24,150
as you know the TTB will suspend

1003
00:33:24,150 --> 00:33:25,522
proceedings when another proceeding

1004
00:33:25,522 --> 00:33:27,538
that is relevant to register ability

1005
00:33:27,538 --> 00:33:29,538
of the involved mark is on going.

1006
00:33:29,540 --> 00:33:31,298
The rule is currently written such

1007
00:33:31,298 --> 00:33:32,770
that this suspension practice is

1008
00:33:32,770 --> 00:33:34,030
limited to proceedings where the

1009
00:33:34,030 --> 00:33:35,660
exact same party or parties are

1010
00:33:35,660 --> 00:33:37,100
engaged in the other proceeding.

1011
00:33:37,100 --> 00:33:38,088
We want to propose.

1012
00:33:38,088 --> 00:33:40,411
We're proposing in the NPRM to amend the

1013
00:33:40,411 --> 00:33:42,245
rule to reflect our actual practice to

1014
00:33:42,305 --> 00:33:44,538
look at the relevance of the proceedings

1015
00:33:44,538 --> 00:33:46,320
to the registrability the registration

1016
00:33:46,320 --> 00:33:49,190
rather than this strictly look at the

1017
00:33:49,190 --> 00:33:51,989
parties to the both to the two proceedings.

1018
00:33:51,990 --> 00:33:52,285
Now,

1019
00:33:52,285 --> 00:33:54,055
some of you might like visuals.

1020
00:33:54,060 --> 00:33:55,240
The Commissioner for trademark,

1021
00:33:55,240 --> 00:33:56,125
like the visuals.

1022
00:33:56,130 --> 00:33:58,209
So I prepared this one for you.

1023
00:33:58,210 --> 00:34:00,282
This is an overview of the expungement

1024
00:34:00,282 --> 00:34:01,170
and reexamination proceeding.

1025
00:34:01,170 --> 00:34:02,550
These slides will be proposed

1026
00:34:02,550 --> 00:34:04,420
will be posted on our website,

1027
00:34:04,420 --> 00:34:05,900
so you can certainly take

1028
00:34:05,900 --> 00:34:07,084
a closer look later,

1029
00:34:07,090 --> 00:34:09,232
but let me walk you through

1030
00:34:09,232 --> 00:34:10,303
this simplified version.

1031
00:34:10,310 --> 00:34:13,047
The process begins with a petition against

1032
00:34:13,047 --> 00:34:15,629
the registration that grows to the examiner.

1033
00:34:15,630 --> 00:34:17,530
There are two possible outcomes.

1034
00:34:17,530 --> 00:34:20,368
The institution decision which would be

1035
00:34:20,368 --> 00:34:23,575
combined with the issuance of the first

1036
00:34:23,575 --> 00:34:26,059
office action or denial of institution.

1037
00:34:26,060 --> 00:34:28,044
The next two steps have a two month

1038
00:34:28,044 --> 00:34:29,997
time frame where the red restaurant

1039
00:34:29,997 --> 00:34:31,747
submits either an acceptable response

1040
00:34:31,747 --> 00:34:33,510
or an unacceptable response,

1041
00:34:33,510 --> 00:34:37,090
or otherwise does not respond.

1042
00:34:37,090 --> 00:34:39,250
If the registrant does not respond,

1043
00:34:39,250 --> 00:34:40,330
there's immediate cancellation

1044
00:34:40,330 --> 00:34:42,130
of the goods and services,

1045
00:34:42,130 --> 00:34:44,142
and potentially that registration

1046
00:34:44,142 --> 00:34:46,657
is tagged for later audit.

1047
00:34:46,660 --> 00:34:48,286
Now if a response comes in,

1048
00:34:48,290 --> 00:34:50,516
the Examiner will review the response.

1049
00:34:50,520 --> 00:34:53,229
And there are three possible outcomes from

1050
00:34:53,229 --> 00:34:55,418
the examiner's review of the response.

1051
00:34:55,420 --> 00:34:57,723
If the response is successful because it

1052
00:34:57,723 --> 00:34:59,659
establishes use excusable nonuse or deletes,

1053
00:34:59,660 --> 00:35:01,290
the challenge goods and services,

1054
00:35:01,290 --> 00:35:03,715
the proceeding is over its

1055
00:35:03,715 --> 00:35:05,655
terminated no cancellation order.

1056
00:35:05,660 --> 00:35:07,711
A second option is the final office

1057
00:35:07,711 --> 00:35:09,866
action will issue because the response was

1058
00:35:09,866 --> 00:35:12,250
not acceptable or there was no response.

1059
00:35:12,250 --> 00:35:13,514
Or thirdly,

1060
00:35:13,514 --> 00:35:17,306
cancellation of the challenge goods and

1061
00:35:17,306 --> 00:35:20,709
services because there was no response.

1062
00:35:20,710 --> 00:35:21,520
Or deletion.

1063
00:35:23,900 --> 00:35:25,740
The next two steps have

1064
00:35:25,740 --> 00:35:27,212
a two month timeframe.

1065
00:35:27,220 --> 00:35:29,128
If the proceeding is not successful,

1066
00:35:29,130 --> 00:35:31,440
the registrant can either file a

1067
00:35:31,440 --> 00:35:33,470
request for reconsideration or appeal.

1068
00:35:33,470 --> 00:35:34,578
Again, the registrar could

1069
00:35:34,578 --> 00:35:35,686
choose not to respond,

1070
00:35:35,690 --> 00:35:37,928
but could potentially potentially face a

1071
00:35:37,928 --> 00:35:41,068
later audit of the rest of the registration.

1072
00:35:41,070 --> 00:35:43,160
The Examiner will review the

1073
00:35:43,160 --> 00:35:44,414
request for consideration.

1074
00:35:44,420 --> 00:35:46,644
Or it will go to the trademark trial

1075
00:35:46,644 --> 00:35:48,928
and Appeal Board to handle that appeal.

1076
00:35:48,930 --> 00:35:50,235
At that point,

1077
00:35:50,235 --> 00:35:52,410
if the request for reconsideration

1078
00:35:52,410 --> 00:35:54,543
is acceptable because proof of

1079
00:35:54,543 --> 00:35:56,528
use was offered and accepted,

1080
00:35:56,530 --> 00:35:58,214
the proceeding is successful

1081
00:35:58,214 --> 00:35:59,898
and the IT terminates,

1082
00:35:59,900 --> 00:36:02,620
or otherwise the markets cancelled

1083
00:36:02,620 --> 00:36:04,796
after the board proceeding.

1084
00:36:04,800 --> 00:36:07,299
So that's a visual and you'll certainly

1085
00:36:07,299 --> 00:36:09,757
will have time to study that later.

1086
00:36:09,760 --> 00:36:12,104
Now moving on to.

1087
00:36:12,104 --> 00:36:15,620
A few other areas that are

1088
00:36:15,755 --> 00:36:18,419
covered by the MPRM.

1089
00:36:18,420 --> 00:36:19,644
So these proposed attorney

1090
00:36:19,644 --> 00:36:21,174
recognition rules are not part

1091
00:36:21,174 --> 00:36:22,708
of our TMA implementation,

1092
00:36:22,710 --> 00:36:23,053
necessarily,

1093
00:36:23,053 --> 00:36:25,797
but are driven by the needs to have

1094
00:36:25,797 --> 00:36:27,882
clear correspondence rules for the

1095
00:36:27,882 --> 00:36:29,977
office and to implement provisions

1096
00:36:29,977 --> 00:36:32,180
of our database login project.

1097
00:36:32,180 --> 00:36:33,158
First of all,

1098
00:36:33,158 --> 00:36:35,440
sort of as an over overarching comment,

1099
00:36:35,440 --> 00:36:37,659
I want to note that these proposed

1100
00:36:37,659 --> 00:36:39,941
rules move from using the term

1101
00:36:39,941 --> 00:36:42,473
representation to using the term recognition.

1102
00:36:42,480 --> 00:36:44,195
The USPTO two recognizes representatives

1103
00:36:44,195 --> 00:36:46,454
for the purpose of determining who is

1104
00:36:46,454 --> 00:36:47,918
authorized to act for the applicant

1105
00:36:47,918 --> 00:36:49,848
or the registrar before the office.

1106
00:36:49,850 --> 00:36:51,710
We do not control the actual

1107
00:36:51,710 --> 00:36:52,640
representation agreement between

1108
00:36:52,640 --> 00:36:54,147
the attorney and the client,

1109
00:36:54,150 --> 00:36:56,100
so we're changing the wording

1110
00:36:56,100 --> 00:36:59,005
of the rule to make that clear

1111
00:36:59,005 --> 00:37:01,170
and to reflect the reality.

1112
00:37:01,170 --> 00:37:03,340
Now, under our current rules,

1113
00:37:03,340 --> 00:37:05,076
recognition ends when an

1114
00:37:05,076 --> 00:37:06,378
application is abandoned,

1115
00:37:06,380 --> 00:37:08,978
a registration expires or is cancelled,

1116
00:37:08,980 --> 00:37:10,868
or it changes ownership.

1117
00:37:10,868 --> 00:37:14,130
Under the proposed rule in the MPR,

1118
00:37:14,130 --> 00:37:16,178
M recognition would instead

1119
00:37:16,178 --> 00:37:18,738
continue after all those events.

1120
00:37:18,740 --> 00:37:21,292
So that means in order to end the

1121
00:37:21,292 --> 00:37:23,865
recognition of the attorney by the USP Tio.

1122
00:37:23,870 --> 00:37:26,012
Owners and attorneys would be required

1123
00:37:26,012 --> 00:37:27,971
to proactively file an appropriate

1124
00:37:27,971 --> 00:37:29,843
revocation or withdrawal document

1125
00:37:29,843 --> 00:37:32,183
rather than the current situation,

1126
00:37:32,190 --> 00:37:33,670
where recognition automatically ends.

1127
00:37:33,670 --> 00:37:36,508
We want to make this change to our

1128
00:37:36,508 --> 00:37:38,454
rules in order to match our practice.

1129
00:37:38,460 --> 00:37:40,686
The background for this slight change

1130
00:37:40,686 --> 00:37:42,570
lies with our correspondence rules.

1131
00:37:42,570 --> 00:37:44,502
The USPTO is supposed to correspond

1132
00:37:44,502 --> 00:37:46,718
only with the applicant or registrant.

1133
00:37:46,720 --> 00:37:48,502
If the applicant or registrant is

1134
00:37:48,502 --> 00:37:50,687
not represented by an attorney, so.

1135
00:37:50,687 --> 00:37:53,886
If recognition is ended after certain events,

1136
00:37:53,890 --> 00:37:55,825
we should stop sending correspondence

1137
00:37:55,825 --> 00:37:57,760
to the attorneys correspondence address,

1138
00:37:57,760 --> 00:37:58,810
but we don't.

1139
00:37:58,810 --> 00:38:00,560
Because stakeholders told us not

1140
00:38:00,560 --> 00:38:02,828
to follow our correspondence rule,

1141
00:38:02,830 --> 00:38:04,454
Attorney stakeholders told us

1142
00:38:04,454 --> 00:38:06,484
they wanted to continue receiving

1143
00:38:06,484 --> 00:38:08,005
correspondence so they could be

1144
00:38:08,005 --> 00:38:09,595
sure of when the post registration

1145
00:38:09,654 --> 00:38:10,539
filings were due.

1146
00:38:10,540 --> 00:38:12,878
For example, to get that courtesy email,

1147
00:38:12,880 --> 00:38:15,225
reminder that a maintenance filing is due.

1148
00:38:15,230 --> 00:38:17,701
So we want to change our rules

1149
00:38:17,701 --> 00:38:20,393
to reflect the practice that we

1150
00:38:20,393 --> 00:38:22,457
actually undertake right now.

1151
00:38:22,460 --> 00:38:23,428
Now additionally,

1152
00:38:23,428 --> 00:38:25,848
this rule change will facilitate

1153
00:38:25,848 --> 00:38:28,801
implementation of the role based access

1154
00:38:28,801 --> 00:38:31,186
control system for applications of

1155
00:38:31,186 --> 00:38:33,290
registrations that were developing.

1156
00:38:33,290 --> 00:38:35,666
So as you may be aware,

1157
00:38:35,670 --> 00:38:37,974
as part of the USPTO's forthcoming

1158
00:38:37,974 --> 00:38:39,510
identity verification process for

1159
00:38:39,572 --> 00:38:42,235
database login, users are likely to be

1160
00:38:42,235 --> 00:38:44,982
assigned a limited number of roles to

1161
00:38:44,982 --> 00:38:47,544
control and delegate access to filings,

1162
00:38:47,550 --> 00:38:49,530
including attorney attorney, support owner,

1163
00:38:49,530 --> 00:38:52,170
and public administrator roles.

1164
00:38:52,170 --> 00:38:54,322
So these rules will tell us who is

1165
00:38:54,322 --> 00:38:56,514
authorized to touch a certain application

1166
00:38:56,514 --> 00:38:58,902
or registration for purposes of controlling

1167
00:38:58,966 --> 00:39:01,283
the security of our database to make

1168
00:39:01,283 --> 00:39:03,118
sure that unauthorized parties can't

1169
00:39:03,118 --> 00:39:06,470
amend an application or file a change of

1170
00:39:06,556 --> 00:39:09,508
correspondence address or or the like.

1171
00:39:09,510 --> 00:39:13,695
Now, if we were to maintain our current rule.

1172
00:39:13,700 --> 00:39:16,620
In order to submit the TS form to file an

1173
00:39:16,699 --> 00:39:19,765
maintenance document on behalf of a client,

1174
00:39:19,770 --> 00:39:21,816
the role based access controls would

1175
00:39:21,816 --> 00:39:23,615
require the no longer recognized

1176
00:39:23,615 --> 00:39:25,475
attorney to 1st request it.

1177
00:39:25,480 --> 00:39:28,336
Permission from the owner in order to file,

1178
00:39:28,340 --> 00:39:30,476
and we're concerned that that could,

1179
00:39:30,480 --> 00:39:32,979
it could end up with miss deadlines.

1180
00:39:32,980 --> 00:39:35,324
Having to add a separate process to the

1181
00:39:35,324 --> 00:39:37,619
process of filing maintenance document.

1182
00:39:37,620 --> 00:39:40,092
So we really would like to fix the

1183
00:39:40,092 --> 00:39:42,630
rule in order to match our practice

1184
00:39:42,630 --> 00:39:45,393
and allow us to assign rules for

1185
00:39:45,393 --> 00:39:47,498
access controls to tighten up.

1186
00:39:47,500 --> 00:39:49,490
Our database security and protect

1187
00:39:49,490 --> 00:39:51,480
the integrity of the register.

1188
00:39:55,330 --> 00:39:57,466
Now we are also proposing a rule to

1189
00:39:57,466 --> 00:39:59,840
change that we clarified the attorney

1190
00:39:59,840 --> 00:40:01,616
obligations when withdrawing from

1191
00:40:01,616 --> 00:40:02,969
representation and differentiate

1192
00:40:02,969 --> 00:40:04,994
the grounds under which the

1193
00:40:04,994 --> 00:40:06,956
attorney must request. I'm sorry.

1194
00:40:06,956 --> 00:40:08,448
Where to different differentiate

1195
00:40:08,448 --> 00:40:10,392
the situations where the attorney

1196
00:40:10,392 --> 00:40:12,367
may request withdraw versus those

1197
00:40:12,367 --> 00:40:14,348
situations where the attorney must

1198
00:40:14,348 --> 00:40:16,073
request withdrawal and there really

1199
00:40:16,073 --> 00:40:17,809
should be no surprises there.

1200
00:40:17,809 --> 00:40:20,252
But this will allow us to be

1201
00:40:20,252 --> 00:40:22,626
consistent with the USPTO rules

1202
00:40:22,626 --> 00:40:23,829
of professional conduct.

1203
00:40:28,280 --> 00:40:33,440
Now wow. Lastly, in the rule package.

1204
00:40:33,440 --> 00:40:36,050
We're up a proposed rule that

1205
00:40:36,050 --> 00:40:38,230
is also unrelated to TMA,

1206
00:40:38,230 --> 00:40:40,834
but it's simply to codify the

1207
00:40:40,834 --> 00:40:42,136
USPS longstanding procedures

1208
00:40:42,136 --> 00:40:43,450
concerning court action.

1209
00:40:43,450 --> 00:40:46,110
I'm sorry concerning action on

1210
00:40:46,110 --> 00:40:48,770
court orders canceling or affecting

1211
00:40:48,857 --> 00:40:51,515
a registration under 15 USC 1119.

1212
00:40:51,520 --> 00:40:53,175
The USPTO requires submission

1213
00:40:53,175 --> 00:40:55,573
of a certified copy of the Court

1214
00:40:55,573 --> 00:40:57,268
order and normally does not.

1215
00:40:57,270 --> 00:40:59,582
An act does not act on such orders

1216
00:40:59,582 --> 00:41:01,998
until the case is finally determined.

1217
00:41:02,000 --> 00:41:03,952
We're simply embedding the

1218
00:41:03,952 --> 00:41:05,904
practice into a rule.

1219
00:41:05,910 --> 00:41:06,813
Here we go.

1220
00:41:06,813 --> 00:41:08,619
So that was a long summary

1221
00:41:08,619 --> 00:41:10,250
of the rule package,

1222
00:41:10,250 --> 00:41:11,870
but it was designed to facilitate

1223
00:41:11,870 --> 00:41:13,422
your efforts to provide formal

1224
00:41:13,422 --> 00:41:14,667
comments to regulations.gov,

1225
00:41:14,670 --> 00:41:16,344
wanted to flag those issues where

1226
00:41:16,344 --> 00:41:18,470
we're looking for a different options,

1227
00:41:18,470 --> 00:41:20,366
and we'd like input on the

1228
00:41:20,366 --> 00:41:21,630
option that you prefer.

1229
00:41:21,630 --> 00:41:24,070
We are hoping that you will help us

1230
00:41:24,070 --> 00:41:26,367
refine this rule package into a rule.

1231
00:41:26,370 --> 00:41:28,662
A final rule that we can

1232
00:41:28,662 --> 00:41:30,190
all be comfortable with.

1233
00:41:30,190 --> 00:41:31,965
Now here's the information about

1234
00:41:31,965 --> 00:41:33,740
how to submit formal comments,

1235
00:41:33,740 --> 00:41:34,805
and of course,

1236
00:41:34,805 --> 00:41:36,935
remember the deadline of July 19th.

1237
00:41:41,590 --> 00:41:43,720
If you are looking for these

1238
00:41:43,720 --> 00:41:45,904
slides or you're looking for a

1239
00:41:45,904 --> 00:41:47,629
recording of this round table,

1240
00:41:47,630 --> 00:41:49,748
or a way to send questions

1241
00:41:49,748 --> 00:41:51,889
to the USPQ about the TMA,

1242
00:41:51,890 --> 00:41:54,368
here is a reference slide for you.

1243
00:41:54,370 --> 00:41:56,260
Go to this website to our

1244
00:41:56,260 --> 00:41:58,393
website and you'll see all the

1245
00:41:58,393 --> 00:42:00,408
information that we have available.

1246
00:42:00,410 --> 00:42:02,355
You'll see information about the

1247
00:42:02,355 --> 00:42:04,639
second of these two roundtables on

1248
00:42:04,639 --> 00:42:06,550
June 14th and the mailbox to which

1249
00:42:06,550 --> 00:42:08,929
you can send informal comments again,

1250
00:42:08,930 --> 00:42:10,922
informal comments will not be considered

1251
00:42:10,922 --> 00:42:13,319
part of the formal rulemaking record.

1252
00:42:13,320 --> 00:42:15,776
If you want them considered in the record,

1253
00:42:15,780 --> 00:42:17,616
they need to go to regulations.gov.

1254
00:42:20,910 --> 00:42:22,580
Now, one thing I did,

1255
00:42:22,580 --> 00:42:25,073
if I can get there is I put together

1256
00:42:25,073 --> 00:42:27,818
3 reference slides for you so you can

1257
00:42:27,818 --> 00:42:30,744
go back and look to see which rules

1258
00:42:30,744 --> 00:42:33,234
are implicated as to which of the

1259
00:42:33,234 --> 00:42:35,558
different features of the of the MPRM.

1260
00:42:35,560 --> 00:42:38,224
So as you see for letters of protest,

1261
00:42:38,230 --> 00:42:40,222
there is a tweak to 2.1494

1262
00:42:40,222 --> 00:42:41,218
shorten response period.

1263
00:42:41,220 --> 00:42:43,710
These are all the rules

1264
00:42:43,710 --> 00:42:45,702
that were implicated there.

1265
00:42:45,710 --> 00:42:47,762
Here are the non use cancellation

1266
00:42:47,762 --> 00:42:49,970
rule sections that have been amended.

1267
00:42:49,970 --> 00:42:51,386
There are some that are new.

1268
00:42:51,390 --> 00:42:53,634
There are some that are just

1269
00:42:53,634 --> 00:42:55,130
amended to be conforming.

1270
00:42:55,130 --> 00:42:57,446
And then we have recognition of

1271
00:42:57,446 --> 00:42:58,604
representation and withdrawal

1272
00:42:58,604 --> 00:43:00,440
rules as well as court orders.

1273
00:43:00,440 --> 00:43:03,320
So those you can go back and make sure

1274
00:43:03,320 --> 00:43:06,454
you cover all the rules in the Imperium.

1275
00:43:11,120 --> 00:43:14,372
I wanted to actually close my

1276
00:43:14,372 --> 00:43:16,540
remarks with a suggestion.

1277
00:43:16,540 --> 00:43:18,742
You might have noticed that as

1278
00:43:18,742 --> 00:43:21,115
part of our initiatives to protect

1279
00:43:21,115 --> 00:43:23,190
the integrity of the trademark

1280
00:43:23,190 --> 00:43:25,414
register from false claims of

1281
00:43:25,414 --> 00:43:27,230
use in fraudulent submissions.

1282
00:43:27,230 --> 00:43:28,052
More generally,

1283
00:43:28,052 --> 00:43:30,107
we are implementing disincentives for

1284
00:43:30,107 --> 00:43:31,340
maintaining inaccurate registrations.

1285
00:43:31,340 --> 00:43:34,210
Or perhaps I should say more directly.

1286
00:43:34,210 --> 00:43:37,050
We are incentivizing accurate registrations.

1287
00:43:37,050 --> 00:43:39,040
Now, one disincentive implemented in

1288
00:43:39,040 --> 00:43:41,196
January 2021, is the deletion fee,

1289
00:43:41,196 --> 00:43:44,210
and the other is the TMA expungement.

1290
00:43:44,210 --> 00:43:45,404
An reexamination proceedings.

1291
00:43:45,404 --> 00:43:46,996
So let me explain.

1292
00:43:47,000 --> 00:43:49,583
The deletion fee is a $250 per

1293
00:43:49,583 --> 00:43:51,999
class fee charged when goods and

1294
00:43:51,999 --> 00:43:54,447
services are deleted in the context

1295
00:43:54,447 --> 00:43:56,534
of a post registration examination

1296
00:43:56,534 --> 00:43:59,338
of a Section 8 or 71 declaration.

1297
00:43:59,338 --> 00:44:00,930
To maintain the registration,

1298
00:44:00,930 --> 00:44:02,915
and this includes the post

1299
00:44:02,915 --> 00:44:04,106
registration audit process.

1300
00:44:04,110 --> 00:44:07,440
If you were selected for audit.

1301
00:44:07,440 --> 00:44:09,426
Now to avoid the deletion fee,

1302
00:44:09,430 --> 00:44:11,605
registrants should file an accurate

1303
00:44:11,605 --> 00:44:14,236
Section 8 or 71 declaration that

1304
00:44:14,236 --> 00:44:16,516
reflects only the goods and services

1305
00:44:16,516 --> 00:44:19,319
for which the mark is in current use.

1306
00:44:19,320 --> 00:44:22,416
If you fail to do that and you are,

1307
00:44:22,420 --> 00:44:24,296
you're targeted in an audit or target

1308
00:44:24,296 --> 00:44:26,539
in a post registration proceeding,

1309
00:44:26,540 --> 00:44:27,764
you will have to.

1310
00:44:27,764 --> 00:44:29,600
If you're if you're forced to

1311
00:44:29,666 --> 00:44:31,358
delete goods and services,

1312
00:44:31,360 --> 00:44:33,754
you will have to pay the $250

1313
00:44:33,754 --> 00:44:35,140
per class deletion fee.

1314
00:44:35,140 --> 00:44:38,236
And if you fail to pay the deletion fee,

1315
00:44:38,240 --> 00:44:40,760
your entire registration is cancelled.

1316
00:44:40,760 --> 00:44:43,868
Non response is not an option.

1317
00:44:43,870 --> 00:44:44,173
Now,

1318
00:44:44,173 --> 00:44:46,294
outside of the context of the Section

1319
00:44:46,294 --> 00:44:48,678
8 and 71 declaration examination,

1320
00:44:48,680 --> 00:44:50,408
registrant should keep their

1321
00:44:50,408 --> 00:44:52,568
registrations clear of any goods

1322
00:44:52,568 --> 00:44:54,982
and services in which the mark is

1323
00:44:54,982 --> 00:44:57,190
not in current use at all times.

1324
00:44:57,190 --> 00:44:59,040
So to incentivize this behavior,

1325
00:44:59,040 --> 00:45:00,792
the USPTO established a zero

1326
00:45:00,792 --> 00:45:02,877
fee for filing a section seven

1327
00:45:02,877 --> 00:45:05,002
amendment that deletes unused goods

1328
00:45:05,002 --> 00:45:07,111
and services from the registration

1329
00:45:07,111 --> 00:45:09,397
at anytime outside of an audit.

1330
00:45:09,400 --> 00:45:12,515
I'm sorry outside of a post registration

1331
00:45:12,515 --> 00:45:15,339
examination for the maintenance filing.

1332
00:45:15,340 --> 00:45:17,536
So I highly recommend that registrants

1333
00:45:17,536 --> 00:45:19,419
and their representatives review their

1334
00:45:19,419 --> 00:45:21,224
registrations for accuracy and make

1335
00:45:21,224 --> 00:45:23,189
adjustments now through this zero fee.

1336
00:45:23,190 --> 00:45:25,098
There's no fee process for doing

1337
00:45:25,098 --> 00:45:27,364
so for fixing up the registration

1338
00:45:27,364 --> 00:45:29,669
and clearing the Deadwood from

1339
00:45:29,669 --> 00:45:31,052
your own registrations.

1340
00:45:31,060 --> 00:45:33,388
And I would add that doing so would

1341
00:45:33,388 --> 00:45:36,806
be a really easy way to avoid having

1342
00:45:36,806 --> 00:45:39,349
one's registration targeted for an

1343
00:45:39,349 --> 00:45:41,857
expungement or reexamination proceeding.

1344
00:45:41,860 --> 00:45:44,404
So that was my public service

1345
00:45:44,404 --> 00:45:46,737
announcement to clean up your

1346
00:45:46,737 --> 00:45:48,937
registrations early and often.

1347
00:45:48,940 --> 00:45:51,327
And so now I would like to

1348
00:45:51,327 --> 00:45:53,807
hear what you all have to say.

1349
00:45:53,810 --> 00:45:56,197
We have 5 speakers signed up to

1350
00:45:56,197 --> 00:45:57,998
provide questions or comments and

1351
00:45:57,998 --> 00:46:00,122
after that we will take questions

1352
00:46:00,122 --> 00:46:02,237
via the email box that Tasha

1353
00:46:02,237 --> 00:46:04,598
indicated for those of you who did

1354
00:46:04,598 --> 00:46:07,034
not sign up for a speaking slot,

1355
00:46:07,040 --> 00:46:09,212
you can email your TMANPRM related

1356
00:46:09,212 --> 00:46:11,331
questions to the TM underscore web

1357
00:46:11,331 --> 00:46:14,187
and R at USBT o.gov box and we will

1358
00:46:14,187 --> 00:46:16,425
attempt to answer them here today.

1359
00:46:16,430 --> 00:46:19,041
So with that I'm going to turn

1360
00:46:19,041 --> 00:46:20,800
it back to Tasha.

1361
00:46:20,800 --> 00:46:23,200
To let us know who the speakers are,

1362
00:46:23,200 --> 00:46:26,120
who have signed up.

1363
00:46:26,120 --> 00:46:27,062
Good afternoon,

1364
00:46:27,062 --> 00:46:29,888
the first speaker is David Rome.

1365
00:46:29,890 --> 00:46:31,899
There we are. Thank you so much.

1366
00:46:31,900 --> 00:46:34,230
You can't hear me though, right?

1367
00:46:34,230 --> 00:46:36,366
I can hear you, thank you.

1368
00:46:36,370 --> 00:46:37,686
Thank you very much.

1369
00:46:37,686 --> 00:46:40,640
I had a quick question for this session.

1370
00:46:40,640 --> 00:46:42,712
One of the most surprising parts of

1371
00:46:42,712 --> 00:46:46,121
the NPRM for me was the fact that

1372
00:46:46,121 --> 00:46:47,753
petitions for expungement examination

1373
00:46:47,826 --> 00:46:49,571
would be immediately uploaded into

1374
00:46:49,571 --> 00:46:52,034
the T SDR and that really factors

1375
00:46:52,034 --> 00:46:53,819
into sort of strategic considerations

1376
00:46:53,819 --> 00:46:55,949
in filing those kinds of positions,

1377
00:46:55,950 --> 00:46:58,715
and I'll wondering to what extent was

1378
00:46:58,715 --> 00:47:01,719
that maybe a technical requirement?

1379
00:47:01,720 --> 00:47:03,316
Because I really expected that to work,

1380
00:47:03,320 --> 00:47:05,847
maybe more like a letter of protest.

1381
00:47:05,850 --> 00:47:09,000
OK, thank you for your question.

1382
00:47:09,000 --> 00:47:11,532
Because the purpose of the proceedings

1383
00:47:11,532 --> 00:47:14,730
is to clear Deadwood off of the register,

1384
00:47:14,730 --> 00:47:16,740
and because the evidence submitted

1385
00:47:16,740 --> 00:47:19,225
to the office is something that

1386
00:47:19,225 --> 00:47:20,857
the office is considering,

1387
00:47:20,860 --> 00:47:23,716
whether to make the prima facie case,

1388
00:47:23,720 --> 00:47:27,016
whether it makes a prima facie case to

1389
00:47:27,016 --> 00:47:29,040
institute proceedings for our purposes,

1390
00:47:29,040 --> 00:47:31,085
all of that information needs

1391
00:47:31,085 --> 00:47:33,130
to be made public immediately,

1392
00:47:33,130 --> 00:47:35,698
an immediately so that the registrant

1393
00:47:35,698 --> 00:47:37,895
whose registration is the subject

1394
00:47:37,895 --> 00:47:39,527
of the filed petition.

1395
00:47:39,530 --> 00:47:40,654
It has, you know,

1396
00:47:40,654 --> 00:47:42,340
notice early and often that they

1397
00:47:42,396 --> 00:47:44,352
may be subject to these proceedings

1398
00:47:44,352 --> 00:47:46,655
if they are instituted so we wanted

1399
00:47:46,655 --> 00:47:48,225
to get that information uploaded

1400
00:47:48,225 --> 00:47:49,440
as quickly as possible.

1401
00:47:49,440 --> 00:47:49,730
Now,

1402
00:47:49,730 --> 00:47:51,470
to the extent that that that

1403
00:47:51,470 --> 00:47:53,455
raises issues for others who are

1404
00:47:53,455 --> 00:47:54,767
looking at the registration,

1405
00:47:54,770 --> 00:47:55,950
they might want to,

1406
00:47:55,950 --> 00:47:58,077
you know if they have evidence about

1407
00:47:58,077 --> 00:48:00,142
you know other goods and services in

1408
00:48:00,142 --> 00:48:02,113
that in that same registration they

1409
00:48:02,113 --> 00:48:04,438
might want to file their own petition,

1410
00:48:04,438 --> 00:48:06,804
but it certainly is something that we

1411
00:48:06,804 --> 00:48:09,518
didn't see any reason to keep that nonpublic.

1412
00:48:09,520 --> 00:48:11,758
Because that that that information may

1413
00:48:11,758 --> 00:48:14,242
be useful to others who are looking

1414
00:48:14,242 --> 00:48:16,398
to see if a registration that is

1415
00:48:16,472 --> 00:48:18,398
blocking them from from applying is

1416
00:48:18,398 --> 00:48:20,962
not in use and needs to be expunged.

1417
00:48:20,962 --> 00:48:23,420
So or re examine for that matter,

1418
00:48:23,420 --> 00:48:24,772
so we didn't really.

1419
00:48:24,772 --> 00:48:26,462
It wasn't a technical requirement,

1420
00:48:26,470 --> 00:48:28,654
so much is just that the purpose in

1421
00:48:28,654 --> 00:48:30,573
the intent of the proceedings was

1422
00:48:30,573 --> 00:48:32,535
to get Deadwood off the register

1423
00:48:32,596 --> 00:48:35,020
and have have folks bring that

1424
00:48:35,020 --> 00:48:36,636
information forward wherever wherever

1425
00:48:36,640 --> 00:48:39,344
it resides and bring it forward to us.

1426
00:48:39,350 --> 00:48:41,450
So we can decide whether the

1427
00:48:41,450 --> 00:48:43,550
evidence rises to the level of.

1428
00:48:43,550 --> 00:48:45,839
A prima facie case of non use,

1429
00:48:45,840 --> 00:48:49,606
so I hope that answers your question.

1430
00:48:49,610 --> 00:48:51,724
Yeah, yeah it does. That's very helpful.

1431
00:48:51,730 --> 00:48:54,467
It's just to take that into consideration

1432
00:48:54,467 --> 00:48:57,008
when putting together more formal comments.

1433
00:48:57,010 --> 00:48:58,487
Great, I look forward to seeing them.

1434
00:48:58,490 --> 00:48:59,794
Thank you.

1435
00:48:59,794 --> 00:49:01,098
Thank you,

1436
00:49:01,098 --> 00:49:05,010
our next speaker is zingha wofi

1437
00:49:05,136 --> 00:49:07,720
me hi good afternoon.

1438
00:49:07,720 --> 00:49:09,670
Hello, good to see you again.

1439
00:49:09,670 --> 00:49:11,966
Yes I want to thank say thank you

1440
00:49:11,966 --> 00:49:14,547
to the USPTO for this round table.

1441
00:49:14,550 --> 00:49:16,559
I will definitely be re watching this

1442
00:49:16,559 --> 00:49:18,976
as soon as available and I want to

1443
00:49:18,976 --> 00:49:20,908
share my gratitude for the willingness

1444
00:49:20,908 --> 00:49:23,540
to discuss these changes as well as

1445
00:49:23,540 --> 00:49:25,700
the opportunity to get some feedback

1446
00:49:25,700 --> 00:49:28,600
from us out here in the trenches.

1447
00:49:28,600 --> 00:49:31,504
I would like to submit comments

1448
00:49:31,504 --> 00:49:33,440
regarding the shorter three

1449
00:49:33,529 --> 00:49:36,084
month response period for office

1450
00:49:36,084 --> 00:49:39,261
actions and such under. We were today.

1451
00:49:39,261 --> 00:49:41,146
We discussed three different options.

1452
00:49:41,150 --> 00:49:43,195
Deputy Commissioner Cotton did delineate

1453
00:49:43,195 --> 00:49:46,935
that for us and it just took me back to

1454
00:49:46,935 --> 00:49:49,470
the roundtable we had back in February.

1455
00:49:49,470 --> 00:49:50,810
I think it was.

1456
00:49:50,810 --> 00:49:53,324
There were quite a few attorneys and

1457
00:49:53,324 --> 00:49:55,898
business advocates on that round table.

1458
00:49:55,900 --> 00:49:58,539
They were speaking out against the examiners,

1459
00:49:58,540 --> 00:50:01,126
one having discretion to decrease their

1460
00:50:01,126 --> 00:50:03,745
response time from the typical six

1461
00:50:03,745 --> 00:50:06,199
months an I didn't submit comments.

1462
00:50:06,200 --> 00:50:07,644
Against this particular change,

1463
00:50:07,644 --> 00:50:10,258
in light of the fact that applicants

1464
00:50:10,258 --> 00:50:12,538
do have an opportunity to request

1465
00:50:12,538 --> 00:50:14,380
an extension of that time,

1466
00:50:14,380 --> 00:50:17,845
we all know many of us know that oftentimes

1467
00:50:17,845 --> 00:50:20,313
applicants do not need the entire six

1468
00:50:20,313 --> 00:50:22,939
months to respond to an office action.

1469
00:50:22,940 --> 00:50:25,229
We also know that bisney busy business

1470
00:50:25,229 --> 00:50:27,030
owners and innovators entrepreneurs,

1471
00:50:27,030 --> 00:50:28,890
they just get super busy.

1472
00:50:28,890 --> 00:50:30,750
And so for that reason,

1473
00:50:30,750 --> 00:50:32,940
I'm highly hesitant to even advise

1474
00:50:32,940 --> 00:50:35,219
them that they have six months.

1475
00:50:35,220 --> 00:50:37,190
Many times they wait until.

1476
00:50:37,190 --> 00:50:39,479
Five months and 25 days before supplying

1477
00:50:39,479 --> 00:50:41,678
that information that was requested of them.

1478
00:50:41,680 --> 00:50:44,044
So closing the gap to three

1479
00:50:44,044 --> 00:50:45,620
months I definitely support.

1480
00:50:45,620 --> 00:50:46,054
However,

1481
00:50:46,054 --> 00:50:49,092
also in that round table in February

1482
00:50:49,092 --> 00:50:51,188
various Abacus spoke out against

1483
00:50:51,188 --> 00:50:53,869
the attending of filing fee for the

1484
00:50:53,950 --> 00:50:56,435
request to extend it beyond the three

1485
00:50:56,435 --> 00:50:59,220
months an I would just like the USPTO

1486
00:50:59,220 --> 00:51:01,485
Teo to reconsider that one $25125.00

1487
00:51:01,485 --> 00:51:03,835
as excessive for such requests.

1488
00:51:03,840 --> 00:51:07,539
I'm so glad that today we were able to

1489
00:51:07,539 --> 00:51:10,806
discuss two other options in this case.

1490
00:51:10,810 --> 00:51:13,340
Coming from a litigation background.

1491
00:51:13,340 --> 00:51:15,769
I kind of look at that request.

1492
00:51:15,770 --> 00:51:18,402
It's like a motion to extend time to

1493
00:51:18,402 --> 00:51:21,062
produce or or you know you need time

1494
00:51:21,062 --> 00:51:23,400
to provide an answer for something.

1495
00:51:23,400 --> 00:51:25,976
An what if I were to look at

1496
00:51:25,976 --> 00:51:27,220
our litigation system?

1497
00:51:27,220 --> 00:51:29,988
Although that is not what this is and

1498
00:51:29,988 --> 00:51:32,080
consider those type of motion fees.

1499
00:51:32,080 --> 00:51:33,180
I'm in New York,

1500
00:51:33,180 --> 00:51:35,301
so when I refer to New York

1501
00:51:35,301 --> 00:51:37,276
State Supreme Court fees looking

1502
00:51:37,276 --> 00:51:39,709
at the US District Court fees,

1503
00:51:39,710 --> 00:51:42,118
the federal court fees and even the

1504
00:51:42,118 --> 00:51:43,879
United States Supreme Court fees,

1505
00:51:43,880 --> 00:51:44,810
nothing approaches $100.

1506
00:51:44,810 --> 00:51:46,050
Nothing is approaching $100

1507
00:51:46,050 --> 00:51:47,540
for those type of motions.

1508
00:51:47,540 --> 00:51:50,666
So in light of the foregoing.

1509
00:51:50,670 --> 00:51:52,110
I respectfully request your

1510
00:51:52,110 --> 00:51:53,190
PTO to reconsider.

1511
00:51:53,190 --> 00:51:55,521
This fee is excessive on behalf of

1512
00:51:55,521 --> 00:51:58,230
artworks and the businesses that we serve.

1513
00:51:58,230 --> 00:52:01,526
I support either of the two options and

1514
00:52:01,526 --> 00:52:04,711
I'm actually going to look at it a little

1515
00:52:04,711 --> 00:52:07,221
bit more and submit formal comments

1516
00:52:07,221 --> 00:52:10,609
and just thinking about the fact that.

1517
00:52:10,610 --> 00:52:12,556
I think it was the third quarter

1518
00:52:12,556 --> 00:52:15,013
of 2020 in the United States over

1519
00:52:15,013 --> 00:52:16,953
the surge in business violence.

1520
00:52:16,960 --> 00:52:19,284
Nearly 80% increase due to the pandemic.

1521
00:52:19,290 --> 00:52:22,206
Now I don't know if it because people were

1522
00:52:22,206 --> 00:52:24,969
bored at home and they decided to create,

1523
00:52:24,970 --> 00:52:27,640
or if the corn team allowed.

1524
00:52:27,640 --> 00:52:30,720
Our time for creativity to explode or expand.

1525
00:52:30,720 --> 00:52:33,096
Either way, these are the businesses

1526
00:52:33,096 --> 00:52:35,340
and the individuals that we serve.

1527
00:52:35,340 --> 00:52:37,270
These are the new businesses,

1528
00:52:37,270 --> 00:52:38,425
the small businesses,

1529
00:52:38,425 --> 00:52:39,580
and they matter.

1530
00:52:39,580 --> 00:52:41,095
And from my own experience

1531
00:52:41,095 --> 00:52:42,610
as a director of an

1532
00:52:42,682 --> 00:52:44,594
organization that runs a

1533
00:52:44,594 --> 00:52:46,506
nonprofit legal services program,

1534
00:52:46,510 --> 00:52:48,820
this fee is excessive for them.

1535
00:52:48,820 --> 00:52:50,750
Any additional fees excessive from

1536
00:52:50,750 --> 00:52:53,050
legal fees are excessive for them,

1537
00:52:53,050 --> 00:52:55,770
and you know, I just want to remind

1538
00:52:55,770 --> 00:52:58,529
us or President Biden's April.

1539
00:52:58,530 --> 00:53:00,138
2021 Proclamation on World

1540
00:53:00,138 --> 00:53:01,344
Intellectual Property Day.

1541
00:53:01,350 --> 00:53:03,768
In honor of the 75th anniversary

1542
00:53:03,768 --> 00:53:05,380
of the Lanham Act,

1543
00:53:05,380 --> 00:53:08,488
that Commissioner Gooder just refer to.

1544
00:53:08,490 --> 00:53:11,466
The opening preamble of that proclamation.

1545
00:53:11,470 --> 00:53:13,942
President Biden went straight to we're

1546
00:53:13,942 --> 00:53:15,183
celebrating inventors, innovators,

1547
00:53:15,183 --> 00:53:18,487
and the creators that enrich our lives right.

1548
00:53:18,490 --> 00:53:21,794
These are the people that create the product,

1549
00:53:21,800 --> 00:53:23,860
services, companies, industries of tomorrow.

1550
00:53:23,860 --> 00:53:25,135
It was very.

1551
00:53:25,135 --> 00:53:27,685
I don't want a dramatic population,

1552
00:53:27,690 --> 00:53:29,325
but the proclamation itself recognized

1553
00:53:29,325 --> 00:53:30,960
the power of intellectual property

1554
00:53:31,013 --> 00:53:32,628
protection for our small businesses,

1555
00:53:32,630 --> 00:53:34,270
enabling them to compete, thrive,

1556
00:53:34,270 --> 00:53:36,910
and play an important role as the heart.

1557
00:53:36,910 --> 00:53:39,538
And these are his words as the heart and

1558
00:53:39,538 --> 00:53:42,497
soul and the engine of our economic progress.

1559
00:53:42,500 --> 00:53:45,200
He went on even further to say that this

1560
00:53:45,200 --> 00:53:48,088
is critical to our success as a nation,

1561
00:53:48,090 --> 00:53:49,740
and these are the inventors.

1562
00:53:49,740 --> 00:53:51,044
These are the innovators,

1563
00:53:51,044 --> 00:53:52,674
either creators that we advocate

1564
00:53:52,674 --> 00:53:53,690
for at artworks.

1565
00:53:53,690 --> 00:53:56,642
They make up 90% of businesses in the US.

1566
00:53:56,650 --> 00:53:58,510
They employ nearly half.

1567
00:53:58,510 --> 00:54:00,370
Of America's private sector

1568
00:54:00,370 --> 00:54:02,579
workers and President Biden cited

1569
00:54:02,579 --> 00:54:05,379
that they create 2/3 of new jobs.

1570
00:54:05,380 --> 00:54:07,510
So I I'm constantly always trying

1571
00:54:07,510 --> 00:54:09,450
to advocate for these people,

1572
00:54:09,450 --> 00:54:11,487
and even though some of us may

1573
00:54:11,487 --> 00:54:13,996
figure oh one 2575 fifty that's not

1574
00:54:13,996 --> 00:54:15,951
alot you're talking about people

1575
00:54:15,951 --> 00:54:18,328
that have inventions as President,

1576
00:54:18,330 --> 00:54:19,070
Biden said,

1577
00:54:19,070 --> 00:54:22,150
born in the garages of small towns, right?

1578
00:54:22,150 --> 00:54:24,110
And they should have.

1579
00:54:24,110 --> 00:54:27,026
Beyond equal footing as those inventions

1580
00:54:27,026 --> 00:54:29,430
of developing high tech labs.

1581
00:54:29,430 --> 00:54:31,170
So this year this world,

1582
00:54:31,170 --> 00:54:34,266
this year's World Intellectual Property Day.

1583
00:54:34,270 --> 00:54:36,783
He made sure President Biden that it

1584
00:54:36,783 --> 00:54:38,623
highlighted the critical roles of

1585
00:54:38,623 --> 00:54:40,711
these small businesses play for the

1586
00:54:40,711 --> 00:54:42,996
resilience and the growth of our economy.

1587
00:54:43,000 --> 00:54:45,310
An if this proclamation is any indication

1588
00:54:45,310 --> 00:54:47,528
of where our country is heading,

1589
00:54:47,530 --> 00:54:49,062
I'm all for it.

1590
00:54:49,062 --> 00:54:53,370
We have to focus on them and I don't want to.

1591
00:54:53,370 --> 00:54:55,200
Would it be to deadhorse?

1592
00:54:55,200 --> 00:54:57,020
Hopefully the horse isn't dead,

1593
00:54:57,020 --> 00:54:59,246
but this is necessary for new businesses

1594
00:54:59,246 --> 00:55:01,400
so that they have opportunities.

1595
00:55:01,400 --> 00:55:03,225
It's it's necessary for greater

1596
00:55:03,225 --> 00:55:05,050
economic prosperity for our country,

1597
00:55:05,050 --> 00:55:08,335
and so an interest of not beating that horse.

1598
00:55:08,340 --> 00:55:11,265
I want to close out to say that I

1599
00:55:11,265 --> 00:55:14,049
request that the USPTO reconsider the

1600
00:55:14,049 --> 00:55:17,147
new filing fees and this is just one

1601
00:55:17,147 --> 00:55:21,090
I'm going to present more in depth.

1602
00:55:21,090 --> 00:55:23,274
Comments that really address all of witness.

1603
00:55:23,280 --> 00:55:25,568
I do not believe applying a fee that

1604
00:55:25,568 --> 00:55:27,870
exceeds even the fees by our state

1605
00:55:27,870 --> 00:55:29,535
courts are federal district courts.

1606
00:55:29,540 --> 00:55:31,724
Even the highest court of our nation.

1607
00:55:31,730 --> 00:55:33,500
United States Supreme Court in any

1608
00:55:33,500 --> 00:55:35,070
way encourages the creative tivity

1609
00:55:35,070 --> 00:55:36,740
that President Biden encouraged an,

1610
00:55:36,740 --> 00:55:39,870
which is also at the core of the Lanham Act.

1611
00:55:39,870 --> 00:55:41,634
So let's get behind our small

1612
00:55:41,634 --> 00:55:43,310
businesses and for fees imposed,

1613
00:55:43,310 --> 00:55:45,487
I'm going to support one that considers

1614
00:55:45,487 --> 00:55:47,378
the economic nature of the applicant.

1615
00:55:47,380 --> 00:55:49,258
So thank you for an opportunity

1616
00:55:49,258 --> 00:55:50,197
to share that,

1617
00:55:50,200 --> 00:55:53,190
and I will be submitting. Formal comments.

1618
00:55:55,220 --> 00:55:57,180
Thank you very much and I look

1619
00:55:57,180 --> 00:55:58,879
forward to reading your comments.

1620
00:55:58,880 --> 00:56:01,015
Yes, it's it's certainly always a balance,

1621
00:56:01,020 --> 00:56:02,495
right? How do you promote

1622
00:56:02,495 --> 00:56:04,680
access to the to the IP system?

1623
00:56:04,680 --> 00:56:07,416
How do you cause recover costs were a fee?

1624
00:56:07,420 --> 00:56:09,636
You know fee funded agency so we have

1625
00:56:09,636 --> 00:56:11,987
to make sure that we cover our costs

1626
00:56:11,987 --> 00:56:14,438
so that the system works for everybody.

1627
00:56:14,440 --> 00:56:16,560
And then how do we make sure that we are

1628
00:56:16,615 --> 00:56:18,575
moving applications efficiently through the

1629
00:56:18,575 --> 00:56:21,150
system and people aren't just, you know,

1630
00:56:21,150 --> 00:56:22,980
waiting six months because they can.

1631
00:56:22,980 --> 00:56:23,570
You know.

1632
00:56:23,570 --> 00:56:25,045
Certainly trying to find that

1633
00:56:25,045 --> 00:56:26,938
right balance is is very difficult.

1634
00:56:26,940 --> 00:56:28,860
So I absolutely appreciate your input.

1635
00:56:28,860 --> 00:56:31,428
On helping us to try to find that

1636
00:56:31,428 --> 00:56:33,306
right balance, we need that input.

1637
00:56:33,306 --> 00:56:35,160
We need those reminders to find

1638
00:56:35,225 --> 00:56:36,557
that the right target,

1639
00:56:36,560 --> 00:56:39,107
the right sweet spot that we can do all

1640
00:56:39,107 --> 00:56:42,014
of those things with one with one choice.

1641
00:56:42,020 --> 00:56:44,267
So I appreciate your input very much.

1642
00:56:44,270 --> 00:56:46,710
Thank you very much.

1643
00:56:46,710 --> 00:56:49,580
And nice this year again you too,

1644
00:56:49,580 --> 00:56:50,061
alright.

1645
00:56:50,061 --> 00:56:53,909
Tasha, who else do we have final speaker

1646
00:56:53,909 --> 00:56:57,116
for today will be Sylvia Esparza.

1647
00:56:57,120 --> 00:57:00,550
She is online but may be experiencing

1648
00:57:00,550 --> 00:57:01,530
technical difficulties.

1649
00:57:01,530 --> 00:57:06,084
Perhaps we should go to one of the audience

1650
00:57:06,084 --> 00:57:09,369
questions while we work to get Sylvia.

1651
00:57:09,370 --> 00:57:12,506
As far as the online great Robert

1652
00:57:12,506 --> 00:57:15,931
Lavash will be our moderator for our

1653
00:57:15,931 --> 00:57:20,017
audience Q&A and if anyone else in the

1654
00:57:20,017 --> 00:57:23,580
audience has questions for our usto panel,

1655
00:57:23,580 --> 00:57:26,622
you can email them now to

1656
00:57:26,622 --> 00:57:27,129
tmunderscorewebinar@uspto.gov.

1657
00:57:27,130 --> 00:57:29,550
Thanks, Tasha.

1658
00:57:29,550 --> 00:57:30,326
First question,

1659
00:57:30,326 --> 00:57:31,878
we have concerns expungement,

1660
00:57:31,880 --> 00:57:33,296
proceeding proceedings and the

1661
00:57:33,296 --> 00:57:35,420
question asks am I correct that

1662
00:57:35,481 --> 00:57:37,309
under the expungement procedure,

1663
00:57:37,310 --> 00:57:39,683
three years of non use is fatal

1664
00:57:39,683 --> 00:57:42,036
even if the registrant has an

1665
00:57:42,036 --> 00:57:44,962
intent to commence use or no intent

1666
00:57:45,042 --> 00:57:46,618
not to commence use.

1667
00:57:46,620 --> 00:57:48,558
So a foreign registration under 66A

1668
00:57:48,558 --> 00:57:51,019
or 44 E is federally vulnerable if

1669
00:57:51,019 --> 00:57:54,183
the mark is not put into use within

1670
00:57:54,183 --> 00:57:56,319
three years after registration,

1671
00:57:56,320 --> 00:57:58,260
regardless of the factual circumstances.

1672
00:57:58,260 --> 00:58:00,590
For example, attempts to license.

1673
00:58:00,590 --> 00:58:02,277
Do you want to answer that Bob?

1674
00:58:02,280 --> 00:58:03,860
Well, I mean I.

1675
00:58:03,860 --> 00:58:05,440
The expungement proceeding is

1676
00:58:05,440 --> 00:58:07,369
available for all those bases.

1677
00:58:07,370 --> 00:58:09,602
So then the question then becomes

1678
00:58:09,602 --> 00:58:11,477
whether the petition and then

1679
00:58:11,477 --> 00:58:13,397
during the course of the preceding

1680
00:58:13,397 --> 00:58:15,200
non use is established.

1681
00:58:15,200 --> 00:58:16,692
So in that case,

1682
00:58:16,692 --> 00:58:21,030
I think the answer is yes, it's.

1683
00:58:21,030 --> 00:58:23,148
Potentially fatal for

1684
00:58:23,148 --> 00:58:26,678
applications under 66 or 44.

1685
00:58:28,870 --> 00:58:31,378
That is my reading as well.

1686
00:58:31,380 --> 00:58:34,068
Under the treaty, those the Treaty

1687
00:58:34,068 --> 00:58:37,249
entitlement is that use needs to be made.

1688
00:58:39,270 --> 00:58:41,629
So at least three years after the

1689
00:58:41,629 --> 00:58:43,258
registration, and if it's not,

1690
00:58:43,258 --> 00:58:46,679
it could be on the 3rd on the first day,

1691
00:58:46,680 --> 00:58:48,708
last day of the third year,

1692
00:58:48,710 --> 00:58:50,390
and that would save it.

1693
00:58:50,390 --> 00:58:52,694
But if it's not put into use within

1694
00:58:52,694 --> 00:58:54,439
three years post registration,

1695
00:58:54,440 --> 00:58:56,210
then it is subject to cancellation

1696
00:58:56,210 --> 00:58:59,315
at the Board an it is subject to an

1697
00:58:59,315 --> 00:59:01,175
expungement proceeding before the director.

1698
00:59:01,180 --> 00:59:02,520
So yeah, we agree.

1699
00:59:04,880 --> 00:59:06,550
Let me just review it.

1700
00:59:06,550 --> 00:59:08,543
See, I might be misunderstanding, right?

1701
00:59:08,543 --> 00:59:10,208
Yeah, I'm just looking at

1702
00:59:10,208 --> 00:59:11,207
the timing provisions.

1703
00:59:11,210 --> 00:59:13,594
You can request it at anytime following the

1704
00:59:13,594 --> 00:59:15,867
expiration of three years after registration,

1705
00:59:15,870 --> 00:59:20,870
so that's consistent with that. OK.

1706
00:59:20,870 --> 00:59:23,390
There's nothing else to add to that question.

1707
00:59:23,390 --> 00:59:26,598
The other one concerned.

1708
00:59:26,600 --> 00:59:29,063
Our attorney recognition

1709
00:59:29,063 --> 00:59:33,168
proposals in the question is.

1710
00:59:33,170 --> 00:59:35,774
PTO will notify before we move on

1711
00:59:35,774 --> 00:59:39,194
one of our viewers has asked about

1712
00:59:39,194 --> 00:59:42,571
excusable nonuse for that question, yes,

1713
00:59:42,571 --> 00:59:46,177
excusable nonuse would be an option.

1714
00:59:46,180 --> 00:59:50,130
In expungement proceeding correct me.

1715
00:59:50,130 --> 00:59:53,772
Yes, so moving on to the

1716
00:59:53,772 --> 00:59:55,593
attorney recognition question.

1717
00:59:55,600 --> 00:59:58,036
PTO will notify registering an counsel of

1718
00:59:58,036 --> 01:00:00,469
record record of cancellation requests,

1719
01:00:00,470 --> 01:00:02,906
but per team EP section 60402,

1720
01:00:02,910 --> 01:00:04,414
the attorney client relationship

1721
01:00:04,414 --> 01:00:06,670
in the PTO terminates upon issue

1722
01:00:06,737 --> 01:00:08,932
of the registration unless Council

1723
01:00:08,932 --> 01:00:09,810
initiates contact.

1724
01:00:09,810 --> 01:00:11,840
There's otherwise no counsel of

1725
01:00:11,840 --> 01:00:13,870
record over and issued registration.

1726
01:00:13,870 --> 01:00:15,362
As I understand it,

1727
01:00:15,362 --> 01:00:17,600
PTO notification to the last Council

1728
01:00:17,669 --> 01:00:19,865
record is therefore not effective to

1729
01:00:19,865 --> 01:00:22,799
give notice to the registration correct.

1730
01:00:22,800 --> 01:00:27,430
The rule. Provides, I believe.

1731
01:00:27,430 --> 01:00:30,920
That we will notify both.

1732
01:00:30,920 --> 01:00:33,158
The registrant an the registrar's attorney.

1733
01:00:33,160 --> 01:00:35,030
Now under our current rule.

1734
01:00:35,030 --> 01:00:35,485
Technically,

1735
01:00:35,485 --> 01:00:37,760
we're not supposed to let

1736
01:00:37,760 --> 01:00:39,125
the registrant attorney.

1737
01:00:39,130 --> 01:00:40,775
We're not supposed to notify

1738
01:00:40,775 --> 01:00:42,420
the registrar attorney under our

1739
01:00:42,481 --> 01:00:44,713
current rule because doing so would

1740
01:00:44,713 --> 01:00:46,201
violate our correspondence rules.

1741
01:00:46,210 --> 01:00:46,528
However,

1742
01:00:46,528 --> 01:00:48,436
in this situation we wanted to

1743
01:00:48,436 --> 01:00:50,659
make sure that both the registrar

1744
01:00:50,659 --> 01:00:51,865
tan their registrants.

1745
01:00:51,870 --> 01:00:54,000
Last attorney of record were aware,

1746
01:00:54,000 --> 01:00:55,765
so that's that's actually consistent

1747
01:00:55,765 --> 01:00:57,643
with our practice, not a rule.

1748
01:00:57,643 --> 01:00:59,972
To give a courtesy email to both the

1749
01:00:59,972 --> 01:01:01,792
Register on the registrants attorney

1750
01:01:01,792 --> 01:01:04,552
that the filing of a petition to

1751
01:01:04,552 --> 01:01:06,617
request institution of proceedings for

1752
01:01:06,617 --> 01:01:08,578
Expungement Re examination was filed.

1753
01:01:08,578 --> 01:01:11,680
Now of course we want to amend our

1754
01:01:11,680 --> 01:01:14,026
recognition rules so that we would

1755
01:01:14,026 --> 01:01:16,944
be notifying the registrar and the

1756
01:01:16,944 --> 01:01:19,176
registrar's attorney consistent well.

1757
01:01:19,180 --> 01:01:20,764
We would then theoretically just notify

1758
01:01:20,764 --> 01:01:22,879
the the red the registrants attorney,

1759
01:01:22,880 --> 01:01:24,578
but we've carved out this proceeding

1760
01:01:24,578 --> 01:01:26,582
so that it's very clear that we

1761
01:01:26,582 --> 01:01:27,942
will notify both the registrar

1762
01:01:27,942 --> 01:01:29,650
tan the Registrar's attorney.

1763
01:01:29,650 --> 01:01:31,631
So this is an exception that we

1764
01:01:31,631 --> 01:01:33,900
built into the rule so that we could

1765
01:01:33,900 --> 01:01:36,031
make sure that we were sending the

1766
01:01:36,031 --> 01:01:38,173
notification to as many parties as

1767
01:01:38,173 --> 01:01:40,430
possible to let them know that this

1768
01:01:40,430 --> 01:01:44,310
was filed. Is that a fair reading, Bob?

1769
01:01:44,310 --> 01:01:44,600
Yeah,

1770
01:01:44,600 --> 01:01:46,920
I mean that goes to the very heart

1771
01:01:46,920 --> 01:01:49,233
of the issue we're trying to

1772
01:01:49,233 --> 01:01:51,188
resolve with the proposed rules.

1773
01:01:51,190 --> 01:01:53,584
We're trying to make our practice

1774
01:01:53,584 --> 01:01:55,506
consistent with the rule and

1775
01:01:55,506 --> 01:01:57,670
as it is as it stands, we,

1776
01:01:57,670 --> 01:02:00,190
although recognition of the.

1777
01:02:00,190 --> 01:02:02,120
Registering attorney ends at registration.

1778
01:02:02,120 --> 01:02:05,312
We do currently keep the attorney

1779
01:02:05,312 --> 01:02:09,038
of record in the in the record.

1780
01:02:09,040 --> 01:02:12,272
Once the if we if the proposed rules

1781
01:02:12,272 --> 01:02:14,889
go through as we envision them,

1782
01:02:14,890 --> 01:02:18,720
that hopefully would be resolved.

1783
01:02:18,720 --> 01:02:21,530
That inconsistency.

1784
01:02:21,530 --> 01:02:23,090
Yes.

1785
01:02:23,090 --> 01:02:23,875
Alright,

1786
01:02:23,875 --> 01:02:29,370
moving on this question concerns Section 7.

1787
01:02:29,370 --> 01:02:30,702
Following Deputy Commissioner

1788
01:02:30,702 --> 01:02:32,922
Cotton suggestions is it envisions

1789
01:02:32,922 --> 01:02:35,780
that a Section 7 could preclude an

1790
01:02:35,780 --> 01:02:37,685
expungement or re examination for

1791
01:02:37,755 --> 01:02:39,819
registration in whole or in part.

1792
01:02:39,820 --> 01:02:42,424
The answer is yes to the extent

1793
01:02:42,424 --> 01:02:43,540
that the section

1794
01:02:43,627 --> 01:02:46,327
seven amendment process was used to

1795
01:02:46,327 --> 01:02:48,910
delete unused goods or services.

1796
01:02:48,910 --> 01:02:51,814
Prior to the filing of a petition to

1797
01:02:51,814 --> 01:02:54,398
expunge or re examine those goods,

1798
01:02:54,400 --> 01:02:57,456
then the the wouldn't be an issue because

1799
01:02:57,456 --> 01:03:00,668
those would no longer be in the registration.

1800
01:03:00,670 --> 01:03:03,590
Now, if once a petition is filed for

1801
01:03:03,590 --> 01:03:06,549
expungement or examination as to those goods,

1802
01:03:06,550 --> 01:03:09,490
the registrar has the option of filing

1803
01:03:09,490 --> 01:03:12,161
a section seven amendment for zero

1804
01:03:12,161 --> 01:03:15,262
fee to delete those goods or services.

1805
01:03:15,270 --> 01:03:16,594
That would work then,

1806
01:03:16,594 --> 01:03:19,120
as a response to the office action.

1807
01:03:19,120 --> 01:03:21,437
As long as the examiners notified by

1808
01:03:21,437 --> 01:03:23,320
the registrant that that happened.

1809
01:03:23,320 --> 01:03:26,208
So to the extent that the Section 7

1810
01:03:26,208 --> 01:03:29,415
process is not part of the expungement

1811
01:03:29,415 --> 01:03:31,335
and re examination process.

1812
01:03:31,340 --> 01:03:33,656
If something happens over there that

1813
01:03:33,656 --> 01:03:36,920
needs to be notified over here so that

1814
01:03:36,920 --> 01:03:38,985
the expungement or examination examiner

1815
01:03:38,985 --> 01:03:41,536
can be aware of it and determine

1816
01:03:41,536 --> 01:03:43,314
whether that moots the proceeding,

1817
01:03:43,314 --> 01:03:46,072
and it certainly would if the deletion

1818
01:03:46,072 --> 01:03:48,708
is accepted under the Section 7 process,

1819
01:03:48,710 --> 01:03:51,038
it would mute the preceding for

1820
01:03:51,038 --> 01:03:52,590
expungement reexamination as to

1821
01:03:52,652 --> 01:03:54,497
the deleted goods or services.

1822
01:03:54,500 --> 01:03:55,306
But again,

1823
01:03:55,306 --> 01:03:57,321
the registrant must respond and

1824
01:03:57,321 --> 01:04:00,073
tell us that that happened so that

1825
01:04:00,073 --> 01:04:01,903
that we are aware that.

1826
01:04:01,910 --> 01:04:04,566
That it had happened and is it is,

1827
01:04:04,570 --> 01:04:05,390
you know,

1828
01:04:05,390 --> 01:04:07,850
acceptable response to the office action

1829
01:04:07,850 --> 01:04:10,794
for the RE examination or the expungement

1830
01:04:10,794 --> 01:04:13,979
Bob do you have anything to add to that?

1831
01:04:13,980 --> 01:04:16,149
I do not.

1832
01:04:16,150 --> 01:04:16,640
OK.

1833
01:04:19,750 --> 01:04:21,034
Jerry Rogers here,

1834
01:04:21,034 --> 01:04:25,090
may I add something to that, absolutely.

1835
01:04:25,090 --> 01:04:27,418
I do want people to be

1836
01:04:27,418 --> 01:04:29,770
cognizant of the fact that if.

1837
01:04:29,770 --> 01:04:32,872
The party whose registration is the

1838
01:04:32,872 --> 01:04:35,443
subject to the expungement proceeding

1839
01:04:35,443 --> 01:04:38,779
also happens to be involved in a TTA

1840
01:04:38,779 --> 01:04:41,716
be proceeding that was suspended

1841
01:04:41,716 --> 01:04:44,761
because of the expungement or

1842
01:04:44,761 --> 01:04:47,386
reexamination proceeding that Section 7.

1843
01:04:47,386 --> 01:04:52,362
Change or any action taken in regard to the

1844
01:04:52,362 --> 01:04:55,457
registration could have consequences for.

1845
01:04:55,460 --> 01:04:57,360
But ETA be proceeding,

1846
01:04:57,360 --> 01:04:59,735
even if it would moot.

1847
01:04:59,740 --> 01:05:00,805
The expungement proceeding.

1848
01:05:00,805 --> 01:05:04,070
It may not moot that ETA be proceeding.

1849
01:05:04,070 --> 01:05:06,230
It could possibly result in a

1850
01:05:06,230 --> 01:05:08,582
judgement in the DTA be proceeding

1851
01:05:08,582 --> 01:05:11,090
so just a little complicating factor

1852
01:05:11,090 --> 01:05:13,165
if both proceedings are pending

1853
01:05:13,165 --> 01:05:15,888
at the same time and the board

1854
01:05:15,890 --> 01:05:19,140
has suspended the TTAB proceeding.

1855
01:05:19,140 --> 01:05:21,170
Great thank you Jerry for adding that.

1856
01:05:21,170 --> 01:05:22,330
I appreciate the perspective.

1857
01:05:24,690 --> 01:05:26,478
Right, and I think this next

1858
01:05:26,478 --> 01:05:28,629
one is also for Judge Rogers.

1859
01:05:28,630 --> 01:05:30,475
Currently, the three year abandonment

1860
01:05:30,475 --> 01:05:32,320
presumption can be overcome in

1861
01:05:32,383 --> 01:05:33,751
a cancellation proceeding by

1862
01:05:33,751 --> 01:05:35,803
showing an intent to commence use.

1863
01:05:35,810 --> 01:05:37,618
It is not the case at the board

1864
01:05:37,618 --> 01:05:39,939
that three years on on non use

1865
01:05:39,939 --> 01:05:41,028
automatically equals cancellation.

1866
01:05:41,030 --> 01:05:43,347
So is this expungement rule going to

1867
01:05:43,347 --> 01:05:45,027
apply in cancellation proceedings so

1868
01:05:45,027 --> 01:05:47,539
that the three years of non use results.

1869
01:05:47,540 --> 01:05:50,116
Not just in a presumption of abandonment,

1870
01:05:50,120 --> 01:05:53,039
but automatic cancellation.

1871
01:05:53,040 --> 01:05:54,776
Like an answer what the intent was,

1872
01:05:54,780 --> 01:05:57,630
but Jerry if you want to go ahead, go ahead.

1873
01:05:57,630 --> 01:06:00,675
Do start Amy and I'll jump in.

1874
01:06:00,680 --> 01:06:02,032
The expungement proceeding is

1875
01:06:02,032 --> 01:06:03,384
not an abandonment proceeding.

1876
01:06:03,390 --> 01:06:05,430
It was not designed that way.

1877
01:06:05,430 --> 01:06:07,796
If the mark was never in used,

1878
01:06:07,800 --> 01:06:10,200
an use is required under the to be

1879
01:06:10,200 --> 01:06:12,042
a trademark under the definition

1880
01:06:12,042 --> 01:06:13,215
of a trademark.

1881
01:06:13,220 --> 01:06:15,908
Use is required if it was never in

1882
01:06:15,908 --> 01:06:18,990
use and it was supposed to be in use.

1883
01:06:18,990 --> 01:06:21,694
It is not a trademark under the definition.

1884
01:06:21,700 --> 01:06:24,080
So then abandonment is a separate issue

1885
01:06:24,080 --> 01:06:26,032
and it doesn't apply abandonment as

1886
01:06:26,032 --> 01:06:28,820
as to a mark that met the definition,

1887
01:06:28,820 --> 01:06:31,524
and that's not what we're talking about here.

1888
01:06:31,530 --> 01:06:33,018
So from that perspective.

1889
01:06:33,018 --> 01:06:34,506
For an expungement proceeding

1890
01:06:34,506 --> 01:06:35,650
before the board,

1891
01:06:35,650 --> 01:06:37,610
it would match what what's happening in

1892
01:06:37,610 --> 01:06:39,560
in the director ordered proceeding in

1893
01:06:39,560 --> 01:06:41,666
that it's not an abandonment proceeding,

1894
01:06:41,670 --> 01:06:44,523
so the intent issue is out of the picture.

1895
01:06:44,530 --> 01:06:46,538
That's not the case for a non you

1896
01:06:46,538 --> 01:06:47,968
know regular abandonment proceeding

1897
01:06:47,968 --> 01:06:49,276
before the board.

1898
01:06:49,280 --> 01:06:49,954
But Jerry,

1899
01:06:49,954 --> 01:06:52,313
I'm sure you're going to answer that

1900
01:06:52,313 --> 01:06:54,970
question a lot, lot more academically.

1901
01:06:54,970 --> 01:06:56,860
Then I will.

1902
01:06:56,860 --> 01:06:57,301
Actually,

1903
01:06:57,301 --> 01:06:59,947
I will probably defer to your

1904
01:06:59,947 --> 01:07:02,848
statement of the intent of the rule,

1905
01:07:02,850 --> 01:07:05,418
and we may address this further

1906
01:07:05,418 --> 01:07:07,130
in the final rule,

1907
01:07:07,130 --> 01:07:09,874
where we would comment on any suggestions

1908
01:07:09,874 --> 01:07:12,493
or report any comments and suggestions

1909
01:07:12,493 --> 01:07:15,685
that were received and respond to them.

1910
01:07:15,690 --> 01:07:16,546
But ultimately,

1911
01:07:16,546 --> 01:07:19,970
if there are issues raised before the board,

1912
01:07:19,970 --> 01:07:22,394
we will have to decide those

1913
01:07:22,394 --> 01:07:24,680
issues when they are raised.

1914
01:07:24,680 --> 01:07:27,410
Clearly your statement now is that.

1915
01:07:27,410 --> 01:07:30,242
The intent I think your your

1916
01:07:30,242 --> 01:07:33,364
statement now is that our attendees

1917
01:07:33,364 --> 01:07:36,199
should look at an expungement

1918
01:07:36,199 --> 01:07:39,130
claim brought at the TTAB as.

1919
01:07:39,130 --> 01:07:41,274
Different than a traditional

1920
01:07:41,274 --> 01:07:44,490
abandonment or non use claim and

1921
01:07:44,581 --> 01:07:47,481
therefore the expungement rules would

1922
01:07:47,481 --> 01:07:51,244
apply in the TTAB proceeding in the

1923
01:07:51,244 --> 01:07:53,946
same way that they would apply in

1924
01:07:53,946 --> 01:07:58,300
the expungement ex parte proceeding.

1925
01:07:58,300 --> 01:08:01,830
I should stay in my lane, shouldn't I?

1926
01:08:01,830 --> 01:08:02,418
No, no,

1927
01:08:02,418 --> 01:08:04,182
I'm I'm just saying everything is

1928
01:08:04,182 --> 01:08:05,982
open to potentially being brought

1929
01:08:05,982 --> 01:08:08,268
before the board in the future,

1930
01:08:08,270 --> 01:08:11,266
and of course will have to decide

1931
01:08:11,266 --> 01:08:14,570
those issues if and when they come up.

1932
01:08:14,570 --> 01:08:14,962
Right,

1933
01:08:14,962 --> 01:08:17,314
but I think it's always good

1934
01:08:17,314 --> 01:08:19,411
for everyone to understand what

1935
01:08:19,411 --> 01:08:21,943
the intent of the office is.

1936
01:08:21,950 --> 01:08:26,387
An for anyone who has concerns about a rule.

1937
01:08:26,390 --> 01:08:28,046
Possibly having consequences different

1938
01:08:28,046 --> 01:08:31,186
than what we intend them to do to

1939
01:08:31,186 --> 01:08:32,661
provide us with their comments

1940
01:08:32,661 --> 01:08:34,738
so that we can consider them.

1941
01:08:38,610 --> 01:08:39,920
Great thank you Jerry and

1942
01:08:39,920 --> 01:08:41,230
thank you for the question.

1943
01:08:44,300 --> 01:08:45,988
Alright, next question is,

1944
01:08:45,988 --> 01:08:48,520
is there a timeframe within which

1945
01:08:48,592 --> 01:08:51,350
the office hopes to issue notices of

1946
01:08:51,350 --> 01:08:53,869
determination in ex parte proceedings?

1947
01:08:53,870 --> 01:08:56,726
So much at two months for letter of

1948
01:08:56,726 --> 01:08:59,537
protest or a similar target pendency.

1949
01:08:59,540 --> 01:09:00,824
I'm sorry, I'm sorry,

1950
01:09:00,824 --> 01:09:03,340
I'm just trying to understand the question.

1951
01:09:03,340 --> 01:09:05,748
Is there a timeframe within which the office

1952
01:09:05,748 --> 01:09:08,168
hopes to issue notices of determination?

1953
01:09:08,170 --> 01:09:11,670
Oh, what is the time?

1954
01:09:11,670 --> 01:09:13,945
I think that remains to be seen

1955
01:09:13,945 --> 01:09:15,838
on volume when she say Bob,

1956
01:09:15,840 --> 01:09:17,670
you know we're hoping to turn

1957
01:09:17,670 --> 01:09:19,289
the intent of the proceedings

1958
01:09:19,289 --> 01:09:21,613
is to be as fast as possible,

1959
01:09:21,620 --> 01:09:23,804
because this is supposed to be a way

1960
01:09:23,804 --> 01:09:25,884
to get Deadwood off the register

1961
01:09:25,884 --> 01:09:28,366
quickly so that folks can, you know,

1962
01:09:28,366 --> 01:09:30,627
applied it on the register who are

1963
01:09:30,627 --> 01:09:32,540
actually putting the marks to use.

1964
01:09:32,540 --> 01:09:35,420
So the idea is that we would be under,

1965
01:09:35,420 --> 01:09:36,022
you know,

1966
01:09:36,022 --> 01:09:38,430
time frames within the office as best we

1967
01:09:38,491 --> 01:09:41,195
can to try to move these efficiently through.

1968
01:09:41,200 --> 01:09:43,846
But because we have no idea how.

1969
01:09:43,850 --> 01:09:46,097
How many of these we will get?

1970
01:09:46,100 --> 01:09:48,020
It is hard to, you know.

1971
01:09:48,020 --> 01:09:49,630
Set the time frames now,

1972
01:09:49,630 --> 01:09:51,394
but the certainly the

1973
01:09:51,394 --> 01:09:53,599
intent is to move quickly.

1974
01:09:53,600 --> 01:09:56,248
Anything to add Bob?

1975
01:09:56,250 --> 01:09:58,762
Now just that you know there is the

1976
01:09:58,762 --> 01:10:01,038
four months total of response time

1977
01:10:01,038 --> 01:10:03,402
period built into the proposed rule,

1978
01:10:03,410 --> 01:10:03,740
right?

1979
01:10:03,740 --> 01:10:06,380
So you have two months to respond to

1980
01:10:06,380 --> 01:10:09,194
the non final and then two months at

1981
01:10:09,194 --> 01:10:11,639
the final office action stage issue.

1982
01:10:11,640 --> 01:10:12,558
Either request,

1983
01:10:12,558 --> 01:10:14,853
reconsideration or appeal so that

1984
01:10:14,853 --> 01:10:17,314
there's four months right there and

1985
01:10:17,314 --> 01:10:19,687
then you have to take into account.

1986
01:10:19,690 --> 01:10:21,490
The additional review and processing that

1987
01:10:21,490 --> 01:10:23,770
the office has to undertake for these.

1988
01:10:23,770 --> 01:10:24,354
But yes,

1989
01:10:24,354 --> 01:10:26,106
the intent is to do these

1990
01:10:26,106 --> 01:10:27,540
as quickly as possible.

1991
01:10:30,210 --> 01:10:32,874
The other question we had from the same

1992
01:10:32,874 --> 01:10:35,758
questioner is what is the purpose for the

1993
01:10:35,758 --> 01:10:37,639
additional explanation of the factual

1994
01:10:37,639 --> 01:10:40,278
statement of the relevant basis for a

1995
01:10:40,278 --> 01:10:42,850
petition which is not required by statute.

1996
01:10:42,850 --> 01:10:46,252
If only one claim in one registration

1997
01:10:46,252 --> 01:10:48,620
is permitted per petition?

1998
01:10:48,620 --> 01:10:51,140
Bobby got that one.

1999
01:10:51,140 --> 01:10:54,844
Yeah, I think the purpose of it is.

2000
01:10:54,850 --> 01:10:56,824
I don't know if it's explicitly

2001
01:10:56,824 --> 01:10:58,140
required by the TMA,

2002
01:10:58,140 --> 01:11:00,388
but you do need to specify in your

2003
01:11:00,388 --> 01:11:02,420
petition what exactly you're claiming.

2004
01:11:02,420 --> 01:11:04,658
Are you claiming?

2005
01:11:04,660 --> 01:11:07,117
Are you seeking a an expungement proceeding?

2006
01:11:07,120 --> 01:11:09,570
Where you're saying there's never been used?

2007
01:11:09,570 --> 01:11:11,988
Or are you seeking a reexamination

2008
01:11:11,988 --> 01:11:14,254
proceeding where you're saying that use

2009
01:11:14,254 --> 01:11:16,590
hasn't been made as of a certain date?

2010
01:11:16,590 --> 01:11:18,345
So that's that's the reason

2011
01:11:18,345 --> 01:11:19,749
for that factual statement.

2012
01:11:19,750 --> 01:11:24,055
I don't think it's intended to be.

2013
01:11:24,060 --> 01:11:26,140
Overly complicated or burdensome.

2014
01:11:28,150 --> 01:11:31,498
I was looking in the statute.

2015
01:11:31,500 --> 01:11:33,294
But I'm not seeing anything as

2016
01:11:33,294 --> 01:11:34,490
additional facts that support

2017
01:11:34,540 --> 01:11:36,064
the allegation that the mark has

2018
01:11:36,064 --> 01:11:37,580
never been used in commerce.

2019
01:11:37,580 --> 01:11:40,079
But yeah, I think I think it

2020
01:11:40,079 --> 01:11:43,382
was just as Bob said to be very

2021
01:11:43,382 --> 01:11:45,522
clear what is being alleged.

2022
01:11:45,530 --> 01:11:49,080
OK, anything else to add?

2023
01:11:49,080 --> 01:11:50,104
There is a question,

2024
01:11:50,104 --> 01:11:52,411
how much of the TMA was driven by

2025
01:11:52,411 --> 01:11:54,541
the types of applications we've been

2026
01:11:54,541 --> 01:11:56,417
receiving over the past few years.

2027
01:11:58,950 --> 01:12:01,942
Well, I think if you go to the

2028
01:12:01,942 --> 01:12:04,768
legislative history for the the Trademark

2029
01:12:04,768 --> 01:12:07,670
Modernization Act, there was a explicit,

2030
01:12:07,670 --> 01:12:10,520
you know mention that the the

2031
01:12:10,615 --> 01:12:13,970
Congressional intent was to address.

2032
01:12:13,970 --> 01:12:17,310
An influx of applications featuring.

2033
01:12:17,310 --> 01:12:19,752
Suspicious specimens of use that perhaps

2034
01:12:19,752 --> 01:12:23,046
this specimens of use that we were receiving

2035
01:12:23,046 --> 01:12:25,446
in applications was were not accurate,

2036
01:12:25,450 --> 01:12:28,278
were fake or doctored, or or just

2037
01:12:28,278 --> 01:12:30,740
didn't reflect actual use in commerce.

2038
01:12:30,740 --> 01:12:33,708
So I think it was built into the

2039
01:12:33,708 --> 01:12:35,829
legislative history that that certainly

2040
01:12:35,829 --> 01:12:38,874
was to address an influx of applications.

2041
01:12:38,880 --> 01:12:41,568
Now, I don't think it's specifically as to

2042
01:12:41,568 --> 01:12:44,169
where those applications were originating,

2043
01:12:44,170 --> 01:12:46,774
but certainly it was to address

2044
01:12:46,774 --> 01:12:48,076
fraudulent submissions and.

2045
01:12:48,080 --> 01:12:51,202
Fake or digitally altered specimens of use

2046
01:12:51,202 --> 01:12:54,297
that don't reflect actual use in commerce.

2047
01:12:54,300 --> 01:12:55,368
Anything to add there?

2048
01:12:59,650 --> 01:13:03,330
Nothing from me. OK. Alright,

2049
01:13:03,330 --> 01:13:05,285
next question noting the current

2050
01:13:05,285 --> 01:13:07,649
heavy workload in the examining core

2051
01:13:07,649 --> 01:13:09,389
will expungement in RE examination

2052
01:13:09,389 --> 01:13:11,202
be handled by the existing

2053
01:13:11,202 --> 01:13:13,344
examination core or a new group?

2054
01:13:15,860 --> 01:13:20,030
The answer to that question is.

2055
01:13:20,030 --> 01:13:22,010
Yet unknown, we're still deciding

2056
01:13:22,010 --> 01:13:24,650
on how these will be handled.

2057
01:13:24,650 --> 01:13:26,330
Certainly we will be,

2058
01:13:26,330 --> 01:13:28,060
you know, developing guidance,

2059
01:13:28,060 --> 01:13:31,175
internal guidance as as the final rule

2060
01:13:31,175 --> 01:13:34,030
takes shape and we will determine what

2061
01:13:34,030 --> 01:13:37,301
that guidance looks like and then who best

2062
01:13:37,301 --> 01:13:39,761
should apply that guidance in examination.

2063
01:13:39,770 --> 01:13:41,870
So I think we will.

2064
01:13:41,870 --> 01:13:45,454
That will be something that we will

2065
01:13:45,454 --> 01:13:48,830
be determining in the coming months.

2066
01:13:48,830 --> 01:13:51,809
And Bob, it looks like we got a comment.

2067
01:13:51,810 --> 01:13:54,798
We got a comment about use is not required

2068
01:13:54,798 --> 01:13:57,586
for a Paris or Madrid filing that is,

2069
01:13:57,590 --> 01:13:59,690
right use is not required as a

2070
01:13:59,690 --> 01:14:01,670
condition to obtain the registration,

2071
01:14:01,670 --> 01:14:04,126
but use is required as a condition to

2072
01:14:04,126 --> 01:14:06,487
maintain the registration and it must be

2073
01:14:06,487 --> 01:14:08,978
used within the first three years post

2074
01:14:08,978 --> 01:14:11,186
registration as that did that moment,

2075
01:14:11,190 --> 01:14:14,375
that it is not used when it's

2076
01:14:14,375 --> 01:14:16,370
required to be used.

2077
01:14:16,370 --> 01:14:18,254
Then it is not a market

2078
01:14:18,254 --> 01:14:19,510
is a perspective mark.

2079
01:14:19,510 --> 01:14:21,388
Until then, the rights don't invest,

2080
01:14:21,390 --> 01:14:24,216
but then then it it is at that point.

2081
01:14:24,220 --> 01:14:26,026
So I think the issue of the

2082
01:14:26,026 --> 01:14:27,630
definition of a trademark was

2083
01:14:27,630 --> 01:14:29,555
what the commenter was raising.

2084
01:14:29,560 --> 01:14:31,822
But that was simply the theory

2085
01:14:31,822 --> 01:14:33,330
behind why expungement was

2086
01:14:33,403 --> 01:14:35,587
something other than abandonment.

2087
01:14:35,590 --> 01:14:38,138
That was the underpinnings of the thinking

2088
01:14:38,138 --> 01:14:40,896
of of the office and of congressional

2089
01:14:40,896 --> 01:14:43,640
staff who were working on the TMA.

2090
01:14:43,640 --> 01:14:46,340
In developing the proposal.

2091
01:14:46,340 --> 01:14:48,139
So I just wanted to address that.

2092
01:14:50,220 --> 01:14:53,050
Alright. In our next question,

2093
01:14:53,050 --> 01:14:55,514
how will brand owners be able to search

2094
01:14:55,514 --> 01:14:58,485
in test test to find which registrations

2095
01:14:58,485 --> 01:15:00,775
have expungement and or reexamination

2096
01:15:00,848 --> 01:15:03,008
proceedings that were instituted?

2097
01:15:05,350 --> 01:15:08,270
Based on how tests works.

2098
01:15:08,270 --> 01:15:11,206
You will not be able to do that.

2099
01:15:11,210 --> 01:15:13,493
Because. Currently,

2100
01:15:13,493 --> 01:15:15,908
the status that status would

2101
01:15:15,908 --> 01:15:18,410
not be searchable in tests.

2102
01:15:21,910 --> 01:15:22,540
So.

2103
01:15:25,320 --> 01:15:27,828
That will not be an option.

2104
01:15:27,830 --> 01:15:29,918
I don't know if you have

2105
01:15:29,918 --> 01:15:31,800
anything to add to that.

2106
01:15:31,800 --> 01:15:33,570
No, but presumably if you were

2107
01:15:33,570 --> 01:15:35,569
searching tests and you found a

2108
01:15:35,569 --> 01:15:37,097
problematic application that was

2109
01:15:37,097 --> 01:15:39,012
blocking or registration that was

2110
01:15:39,012 --> 01:15:40,974
blocking you in your clearance search,

2111
01:15:40,980 --> 01:15:42,798
you would probably dig deeper and

2112
01:15:42,798 --> 01:15:45,863
go to the T SDR status tab where all

2113
01:15:45,863 --> 01:15:48,120
of this information would be found.

2114
01:15:48,120 --> 01:15:50,500
So if you found a problematic one,

2115
01:15:50,500 --> 01:15:53,195
you would certainly be able to find

2116
01:15:53,195 --> 01:15:55,191
out whether proceeding was instituted

2117
01:15:55,191 --> 01:15:57,879
very easily in the SDR documents tab.

2118
01:15:57,880 --> 01:16:00,015
It would be right there for you.

2119
01:16:00,020 --> 01:16:01,001
Alright, next question.

2120
01:16:01,001 --> 01:16:03,290
The NPRM states that registrants that

2121
01:16:03,346 --> 01:16:05,464
are subject to ex parte expungement

2122
01:16:05,464 --> 01:16:07,301
or reexamination proceedings in shows

2123
01:16:07,301 --> 01:16:09,121
surface sufficient use in response

2124
01:16:09,121 --> 01:16:10,931
cannot be challenged through the

2125
01:16:10,931 --> 01:16:12,686
same type of proceedings again.

2126
01:16:12,690 --> 01:16:14,916
But registers that wish to amend

2127
01:16:14,916 --> 01:16:16,400
their own registration should

2128
01:16:16,463 --> 01:16:18,317
do so via Section 7 amendments.

2129
01:16:18,320 --> 01:16:20,016
Shouldn't registrants that proactively

2130
01:16:20,016 --> 01:16:22,136
amend their registrations be permitted

2131
01:16:22,136 --> 01:16:23,742
to voluntarily submit evidence of

2132
01:16:23,742 --> 01:16:25,823
use so as to avoid the possibility

2133
01:16:25,823 --> 01:16:27,857
of expungement or re examination and

2134
01:16:27,857 --> 01:16:30,155
get the benefit of the conclusive?

2135
01:16:30,155 --> 01:16:30,580
Effect.

2136
01:16:32,640 --> 01:16:34,348
The installation question this,

2137
01:16:34,348 --> 01:16:37,482
this is something that that we have

2138
01:16:37,482 --> 01:16:39,466
had stakeholders raised before.

2139
01:16:39,470 --> 01:16:42,862
What we recommend is that if a registrant

2140
01:16:42,862 --> 01:16:45,838
wants to provide evidence of use,

2141
01:16:45,840 --> 01:16:48,528
proof of use through the Section

2142
01:16:48,528 --> 01:16:51,765
7 process such that it would be

2143
01:16:51,765 --> 01:16:54,025
entered into the file wrapper.

2144
01:16:54,030 --> 01:16:56,300
Certainly registrants can do that.

2145
01:16:56,300 --> 01:16:59,282
The office would not be evaluating

2146
01:16:59,282 --> 01:17:03,187
that proof of use to see if it meets.

2147
01:17:03,190 --> 01:17:04,980
Requirements so from that perspective

2148
01:17:04,980 --> 01:17:07,290
the restaurant is free to do that,

2149
01:17:07,290 --> 01:17:10,026
and that that might be a good practice,

2150
01:17:10,030 --> 01:17:12,894
but it's not something that the office then

2151
01:17:12,894 --> 01:17:15,157
would validate if that makes any sense.

2152
01:17:15,160 --> 01:17:17,308
We wouldn't examine that proof review

2153
01:17:17,308 --> 01:17:20,084
says to each one that would be an

2154
01:17:20,084 --> 01:17:21,992
enormous workload for us to do,

2155
01:17:22,000 --> 01:17:24,724
and so from a resource perspective, I don't.

2156
01:17:24,724 --> 01:17:26,746
I don't think that's that's feasible

2157
01:17:26,746 --> 01:17:27,810
at this time,

2158
01:17:27,810 --> 01:17:29,495
but certainly providing that evidence

2159
01:17:29,495 --> 01:17:31,954
and having it in the file wrapper

2160
01:17:31,954 --> 01:17:33,739
through the Section 7 process.

2161
01:17:33,740 --> 01:17:35,486
Would not would not be problematic.

2162
01:17:35,490 --> 01:17:37,826
You would certainly be able to do that,

2163
01:17:37,830 --> 01:17:39,622
and that might be useful for folks who

2164
01:17:39,622 --> 01:17:41,463
are or looking at registrations and

2165
01:17:41,463 --> 01:17:43,467
looking at your registration to figure

2166
01:17:43,522 --> 01:17:45,418
out if if there's any vulnerabilities,

2167
01:17:45,420 --> 01:17:47,208
I should say, but that's certainly

2168
01:17:47,208 --> 01:17:48,919
there's an Ave to do that,

2169
01:17:48,920 --> 01:17:50,552
but it's not something that the

2170
01:17:50,552 --> 01:17:52,140
office would examine or validate,

2171
01:17:52,140 --> 01:17:53,013
if that makes.

2172
01:17:53,013 --> 01:17:54,177
If that makes sense.

2173
01:17:54,180 --> 01:17:58,140
Bob, you have anything to add on that.

2174
01:17:58,140 --> 01:18:00,786
Nothing other than just to say that

2175
01:18:00,786 --> 01:18:03,083
that preclusive effect is derived from

2176
01:18:03,083 --> 01:18:05,638
from the estoppel provisions in the TMA.

2177
01:18:05,640 --> 01:18:06,765
So, you know,

2178
01:18:06,765 --> 01:18:09,015
that's where that's coming from so.

2179
01:18:11,240 --> 01:18:13,400
You know, this voluntary submission

2180
01:18:13,400 --> 01:18:16,059
would not really qualify under the

2181
01:18:16,059 --> 01:18:18,189
Statute for that preclusive effect.

2182
01:18:18,190 --> 01:18:21,402
That's a great point. Alright, we have

2183
01:18:21,402 --> 01:18:24,310
a follow up on the three year non use.

2184
01:18:24,310 --> 01:18:26,440
How do you reconcile the three

2185
01:18:26,440 --> 01:18:28,970
year non use drop dead deadline?

2186
01:18:28,970 --> 01:18:31,539
Oh, with a case. Let's see here,

2187
01:18:31,540 --> 01:18:33,652
Federal Circuit has ruled that although

2188
01:18:33,652 --> 01:18:35,939
the Trademark Act refers to abandonment,

2189
01:18:35,940 --> 01:18:39,588
the allegation that a mark was never used.

2190
01:18:39,590 --> 01:18:41,216
Please, if necessary, nonuse for abandonment,

2191
01:18:41,220 --> 01:18:43,670
so long as the period of nonuse is at least

2192
01:18:43,735 --> 01:18:45,849
three years or less than three years,

2193
01:18:45,850 --> 01:18:47,998
is accompanied by lack of intent

2194
01:18:47,998 --> 01:18:49,770
to resume or commence use.

2195
01:18:49,770 --> 01:18:52,218
So again, I am Russian here with the case.

2196
01:18:54,400 --> 01:18:56,768
So meaning that OK,

2197
01:18:56,768 --> 01:19:00,320
this is a treaty interpretation issue.

2198
01:19:00,320 --> 01:19:08,000
Fun, so the. Implementation of.

2199
01:19:08,000 --> 01:19:10,816
The treaty provisions regarding

2200
01:19:10,816 --> 01:19:12,928
non use cancellation.

2201
01:19:12,930 --> 01:19:16,450
the US initially implemented those

2202
01:19:16,450 --> 01:19:19,970
through the doctrine of abandonment.

2203
01:19:22,180 --> 01:19:23,980
Now let me back up.

2204
01:19:23,980 --> 01:19:25,904
Abandonment again the Trademark

2205
01:19:25,904 --> 01:19:28,790
Modernization Act creates a new ground

2206
01:19:28,866 --> 01:19:31,050
for cancellation and a new proceeding

2207
01:19:31,050 --> 01:19:33,890
for a mark that is never been used.

2208
01:19:33,890 --> 01:19:37,283
So it is creating a new type of of

2209
01:19:37,283 --> 01:19:39,667
cancellation that is not abandonment.

2210
01:19:39,670 --> 01:19:42,694
So to the extent that there is abandonment

2211
01:19:42,694 --> 01:19:45,458
case law that addresses section 44.

2212
01:19:45,460 --> 01:19:47,932
In that case it was a

2213
01:19:47,932 --> 01:19:49,168
section 44 registration.

2214
01:19:49,170 --> 01:19:52,474
It is not applicable to the TMA provision.

2215
01:19:52,480 --> 01:19:55,560
It is a different provision.

2216
01:19:55,560 --> 01:19:56,960
So I'm certainly certainly happy

2217
01:19:56,960 --> 01:19:58,812
to have a conversation with the

2218
01:19:58,812 --> 01:20:00,416
Commentor about treaty interpretations,

2219
01:20:00,420 --> 01:20:02,534
but I don't know that it's the

2220
01:20:02,534 --> 01:20:04,959
best use of our time here today,

2221
01:20:04,960 --> 01:20:07,735
but we can certainly have

2222
01:20:07,735 --> 01:20:09,400
that conversation offline.

2223
01:20:09,400 --> 01:20:11,362
Bob, do we have any other

2224
01:20:11,362 --> 01:20:12,343
questions coming in?

2225
01:20:12,350 --> 01:20:14,850
As far as I can tell that that was it.

2226
01:20:17,870 --> 01:20:20,534
Yes, that was the last question that we

2227
01:20:20,534 --> 01:20:22,908
received from the audience Missus Farza.

2228
01:20:22,910 --> 01:20:25,430
If you are available for our June

2229
01:20:25,430 --> 01:20:28,090
14th round Table, then we hope that

2230
01:20:28,090 --> 01:20:31,582
you will be able to return then and

2231
01:20:31,582 --> 01:20:34,678
provide your comments or submit them.

2232
01:20:34,680 --> 01:20:37,501
At this time, will move forward with

2233
01:20:37,501 --> 01:20:39,985
closing remarks from Chief Administrative

2234
01:20:39,985 --> 01:20:42,389
trademark Judge Gerard Rogers.

2235
01:20:42,390 --> 01:20:43,866
Thank you Tasha.

2236
01:20:43,866 --> 01:20:49,111
I will focus just for a moment on the tabl's

2237
01:20:49,111 --> 01:20:53,066
role in all of this proposed rulemaking.

2238
01:20:53,070 --> 01:20:56,910
Obviously we are a small part of some

2239
01:20:56,910 --> 01:20:59,540
very significant changes to practice

2240
01:20:59,540 --> 01:21:03,215
that are of interest and potentially of

2241
01:21:03,305 --> 01:21:06,773
concern to both registrants and would

2242
01:21:06,773 --> 01:21:11,430
be petitioners or erstwhile petitioners.

2243
01:21:11,430 --> 01:21:14,580
So one could look at that emmas

2244
01:21:14,580 --> 01:21:17,706
provisions and the proposed rules as

2245
01:21:17,706 --> 01:21:20,501
really just providing or concerning

2246
01:21:20,501 --> 01:21:24,578
that ETA be to the extent that we

2247
01:21:24,578 --> 01:21:26,992
have to establish procedures for

2248
01:21:26,992 --> 01:21:29,000
handling appeals from examiner.

2249
01:21:29,000 --> 01:21:31,140
Reviews of expungement and

2250
01:21:31,140 --> 01:21:33,280
reexamination proceedings and their

2251
01:21:33,280 --> 01:21:35,530
final determination on those appeals,

2252
01:21:35,530 --> 01:21:36,404
of course,

2253
01:21:36,404 --> 01:21:39,463
are going to be handled in the

2254
01:21:39,463 --> 01:21:41,609
same way procedurally.

2255
01:21:41,610 --> 01:21:43,860
That our existing appeals are,

2256
01:21:43,860 --> 01:21:44,762
of course,

2257
01:21:44,762 --> 01:21:47,468
the substantive issues that will be

2258
01:21:47,468 --> 01:21:50,707
before us when we are reviewing those

2259
01:21:50,707 --> 01:21:53,901
appeals will be different in kind from

2260
01:21:53,901 --> 01:21:56,904
the existing appeals that we now here.

2261
01:21:56,910 --> 01:21:59,254
We also, of course,

2262
01:21:59,254 --> 01:22:00,426
have to.

2263
01:22:00,430 --> 01:22:03,760
Set up a way for our systems to accept

2264
01:22:03,760 --> 01:22:06,700
and to process appeals involving

2265
01:22:06,700 --> 01:22:10,408
registrations which did not exist before.

2266
01:22:10,410 --> 01:22:12,402
We've always had appeals

2267
01:22:12,402 --> 01:22:13,398
involving applications,

2268
01:22:13,400 --> 01:22:16,200
so there's the IT work that we're

2269
01:22:16,200 --> 01:22:19,663
doing to allow for appeals involving

2270
01:22:19,663 --> 01:22:22,567
registrations rather than applications.

2271
01:22:22,570 --> 01:22:23,248
Of course,

2272
01:22:23,248 --> 01:22:25,960
we also have the Tmas provision of an

2273
01:22:26,035 --> 01:22:28,579
expungement ground for cancellation,

2274
01:22:28,580 --> 01:22:32,206
and I think some of the questions

2275
01:22:32,206 --> 01:22:35,419
that we've heard today bring up.

2276
01:22:35,420 --> 01:22:37,712
The issue of is that expungement

2277
01:22:37,712 --> 01:22:40,812
claim that can be brought in a

2278
01:22:40,812 --> 01:22:42,800
cancellation proceeding at that

2279
01:22:42,800 --> 01:22:45,401
ETA be significantly different than

2280
01:22:45,401 --> 01:22:48,497
existing abandonment or non use claims.

2281
01:22:48,500 --> 01:22:51,440
Now, to the extent that.

2282
01:22:51,440 --> 01:22:53,490
We are contemplating expungement as

2283
01:22:53,490 --> 01:22:56,699
a claim brought at the board as akin

2284
01:22:56,699 --> 01:22:59,226
to expungement brought in an ex parte

2285
01:22:59,297 --> 01:23:02,267
proceeding before the examining operation.

2286
01:23:02,270 --> 01:23:05,627
But you might have to think of it as

2287
01:23:05,627 --> 01:23:09,281
a different claim and I think Congress

2288
01:23:09,281 --> 01:23:13,368
has made it clear that they were not.

2289
01:23:13,370 --> 01:23:15,479
Supplanting or offering

2290
01:23:15,479 --> 01:23:20,400
expungement as a claim at the TTAB.

2291
01:23:20,400 --> 01:23:22,785
As a replacement for anything

2292
01:23:22,785 --> 01:23:24,216
that already existed.

2293
01:23:24,220 --> 01:23:26,980
So our existing case law will

2294
01:23:26,980 --> 01:23:29,863
continue to influence how we decide

2295
01:23:29,863 --> 01:23:32,248
abandonment and non use claims

2296
01:23:32,248 --> 01:23:35,188
fraud claims and things like that.

2297
01:23:35,190 --> 01:23:40,830
But we may have to develop new case law too.

2298
01:23:40,830 --> 01:23:43,020
Influence how we decide the expungement

2299
01:23:43,020 --> 01:23:44,949
claims that will be potentially

2300
01:23:44,949 --> 01:23:47,385
brought once the TMA takes effect.

2301
01:23:47,390 --> 01:23:49,320
So we do have to,

2302
01:23:49,320 --> 01:23:50,104
I think,

2303
01:23:50,104 --> 01:23:52,456
think of expungement as a new

2304
01:23:52,456 --> 01:23:55,433
type of claim at the board and we

2305
01:23:55,433 --> 01:23:58,200
will see how we will handle it.

2306
01:23:58,200 --> 01:24:00,867
And until we get those claims and

2307
01:24:00,867 --> 01:24:03,599
have to decide them on the merits,

2308
01:24:03,600 --> 01:24:06,055
we probably will have little

2309
01:24:06,055 --> 01:24:08,910
to say about it until we.

2310
01:24:08,910 --> 01:24:11,376
Have to say something about it.

2311
01:24:11,380 --> 01:24:14,676
Up the other thing that I think is

2312
01:24:14,676 --> 01:24:16,953
important for our stakeholders and

2313
01:24:16,953 --> 01:24:20,138
our customers to keep in mind is

2314
01:24:20,224 --> 01:24:23,274
the interplay between TTAB proceedings

2315
01:24:23,274 --> 01:24:25,714
and these new proceedings.

2316
01:24:25,720 --> 01:24:28,070
As one of our speakers,

2317
01:24:28,070 --> 01:24:30,420
one of our commenters said

2318
01:24:30,420 --> 01:24:32,300
this is not litigation.

2319
01:24:32,300 --> 01:24:35,436
The new X party proceedings before the

2320
01:24:35,436 --> 01:24:37,939
examining operation are not litigation.

2321
01:24:37,940 --> 01:24:40,272
TTAB litigation involving an

2322
01:24:40,272 --> 01:24:43,187
expungement claim would be litigation.

2323
01:24:43,190 --> 01:24:45,375
So the new proceedings are

2324
01:24:45,375 --> 01:24:47,560
additional tools in the toolkit

2325
01:24:47,641 --> 01:24:50,533
of anyone who is interested in

2326
01:24:50,533 --> 01:24:52,461
removing a blocking registration,

2327
01:24:52,470 --> 01:24:54,790
or perhaps removing a registration

2328
01:24:54,790 --> 01:24:57,110
that may not be blocking,

2329
01:24:57,110 --> 01:24:59,006
but for other reasons,

2330
01:24:59,006 --> 01:25:01,376
you may think it just

2331
01:25:01,376 --> 01:25:03,609
shouldn't be on the register.

2332
01:25:05,720 --> 01:25:07,436
The standing requirement,

2333
01:25:07,436 --> 01:25:10,296
now known because the Federal

2334
01:25:10,296 --> 01:25:13,312
Circuit case law as the entitlement

2335
01:25:13,312 --> 01:25:15,988
to a statutory cause of action

2336
01:25:16,074 --> 01:25:18,444
is present in the TTAB proceeding

2337
01:25:18,444 --> 01:25:20,984
but not in the proceedings being

2338
01:25:20,984 --> 01:25:23,846
brought in the ex party context.

2339
01:25:23,850 --> 01:25:26,706
As one speaker already pointed out,

2340
01:25:26,710 --> 01:25:28,036
you also have.

2341
01:25:28,036 --> 01:25:30,688
All of the information you gathered

2342
01:25:30,688 --> 01:25:32,538
during your investigation that

2343
01:25:32,538 --> 01:25:35,632
you are filing with your ex parte

2344
01:25:35,713 --> 01:25:38,425
proceeding and if it is instituted,

2345
01:25:38,430 --> 01:25:40,968
that information is uploaded right away.

2346
01:25:40,970 --> 01:25:43,085
Whereas if you bring an

2347
01:25:43,085 --> 01:25:45,200
expungement claim at the board,

2348
01:25:45,200 --> 01:25:47,564
it's notice pleading to get that

2349
01:25:47,564 --> 01:25:50,454
started on you may not be providing

2350
01:25:50,454 --> 01:25:53,324
a lot of information other than your

2351
01:25:53,402 --> 01:25:56,090
allegations in your petition to get

2352
01:25:56,090 --> 01:25:58,372
that proceeding up and running.

2353
01:25:58,372 --> 01:25:59,336
There are.

2354
01:25:59,336 --> 01:26:00,782
Strategic considerations that

2355
01:26:00,782 --> 01:26:03,498
people will have to consider whether

2356
01:26:03,498 --> 01:26:05,997
they want to go to the board,

2357
01:26:06,000 --> 01:26:08,634
where they can couple an expungement

2358
01:26:08,634 --> 01:26:10,859
claim with additional claims where

2359
01:26:10,859 --> 01:26:13,247
they have the possibility of a

2360
01:26:13,247 --> 01:26:15,218
quick default judgment which might

2361
01:26:15,218 --> 01:26:17,324
be even quicker than a resolution

2362
01:26:17,324 --> 01:26:19,830
in one of the ex parte proceedings

2363
01:26:19,830 --> 01:26:23,035
where you can go to trial and get

2364
01:26:23,035 --> 01:26:25,240
discovery on those other claims.

2365
01:26:25,240 --> 01:26:27,376
If you think it's important to

2366
01:26:27,376 --> 01:26:29,770
bring not just an expungement.

2367
01:26:29,770 --> 01:26:33,426
Claim, but also to bring some other claims.

2368
01:26:33,430 --> 01:26:37,430
So I think the statute and the proposed

2369
01:26:37,430 --> 01:26:41,054
rules give us a lot of pause and a

2370
01:26:41,054 --> 01:26:44,686
lot to think about and open up new

2371
01:26:44,686 --> 01:26:48,493
opportunities for all of us to think about,

2372
01:26:48,493 --> 01:26:50,748
and hopefully choices are a

2373
01:26:50,748 --> 01:26:53,079
good thing in this context,

2374
01:26:53,080 --> 01:26:55,816
when the legislation provides those choices.

2375
01:26:55,820 --> 01:26:57,101
So with that,

2376
01:26:57,101 --> 01:27:00,090
I will thank those people who have

2377
01:27:00,182 --> 01:27:03,117
spoken and provided comments and.

2378
01:27:03,120 --> 01:27:05,280
Echo the remarks of Commissioner

2379
01:27:05,280 --> 01:27:08,015
Gordon earlier that we are interested

2380
01:27:08,015 --> 01:27:10,871
in all comments, informal or formal.

2381
01:27:10,871 --> 01:27:12,699
But as Deputy Commissioner,

2382
01:27:12,700 --> 01:27:14,065
Cotton pointed out.

2383
01:27:14,065 --> 01:27:15,430
If it's formal,

2384
01:27:15,430 --> 01:27:19,534
you may see it summarized in the final rule.

2385
01:27:19,540 --> 01:27:22,725
If it's informal, will certainly consider it,

2386
01:27:22,730 --> 01:27:26,450
but it may not be in the roles

2387
01:27:26,450 --> 01:27:29,898
in the final rule package.

2388
01:27:29,900 --> 01:27:30,872
Thank you, Tasha.

2389
01:27:30,872 --> 01:27:31,861
Thank you, Amy.

2390
01:27:31,861 --> 01:27:32,543
Thank you,

2391
01:27:32,543 --> 01:27:34,589
Chief Judge Rogers and thank you

2392
01:27:34,589 --> 01:27:37,127
all for you all for attending our

2393
01:27:37,127 --> 01:27:39,104
roundtable today and for providing

2394
01:27:39,104 --> 01:27:41,048
the questions and comments.

2395
01:27:41,050 --> 01:27:43,626
As all of our speakers have mentioned,

2396
01:27:43,630 --> 01:27:45,933
if you want to provide formal comments

2397
01:27:45,933 --> 01:27:48,060
on the Trademark Modernization Act,

2398
01:27:48,060 --> 01:27:49,388
Notice of proposed rulemaking

2399
01:27:49,388 --> 01:27:51,805
that will be part of the official

2400
01:27:51,805 --> 01:27:53,615
records and reviewed and responded

2401
01:27:53,615 --> 01:27:55,810
to in the final rulemaking,

2402
01:27:55,810 --> 01:27:57,638
please submit them at

2403
01:27:57,638 --> 01:27:59,466
www.regulations.gov by July 19.

2404
01:27:59,470 --> 01:28:01,070
This roundtable was recorded on

2405
01:28:01,070 --> 01:28:03,044
the video along with the slides

2406
01:28:03,044 --> 01:28:04,928
will be made available on our

2407
01:28:04,928 --> 01:28:06,790
website within two to three weeks.

2408
01:28:06,790 --> 01:28:08,974
We will email links to all that

2409
01:28:08,974 --> 01:28:11,330
signed up to it to attend today.

2410
01:28:11,330 --> 01:28:13,850
Once these materials are available online.

2411
01:28:13,850 --> 01:28:15,355
Thank you all and have a great

2412
01:28:15,355 --> 01:28:16,250
rest of your day.