For the past year and a half, members of the U.S. Subcommittee of INTA’s Non-Traditional Marks Committee analyzed the USPTO Design Code System with the goal of improving it for increased accuracy of clearance search results and a reduction in the number of unnecessary conflicts. The subcommittee decided on a two-pronged approach: (i) raising awareness of the practitioner; and (ii) seeking clarification about the process from the USPTO.
To raise awareness of the design code system, the subcommittee published an INTA Bulletin
article, “Tips for Navigating the USPTO Design Code System
,” on October 1, 2016, vol. 71, no. 17, to educate practitioners about the system by providing (i) background on the significance of coding; and (ii) options for practitioners to ensure coding is robust by reviewing the assigned codes and requesting modification, addition, or deletion of codes in a USPTO record.
At the same time, the USPTO implemented its own analysis of the system. Results of this analysis and subsequent improvements were presented to the subcommittee at INTA's 2017 Annual Meeting in Barcelona by Meryl Hershkowitz, Deputy Commissioner for Trademark Operations. The presentation was entitled “Improving the Customer Experience with Design Search Coding.”
This INTA Bulletin
article provides a synopsis of the points addressed by Deputy Commissioner Hershkowitz and outlines key improvements to the USPTO notices, webpage, and training. The key improvements are as follows.
Design Search Code Notice
After an application is filed, the USPTO reviews the mark to determine if one or more design codes should be assigned. If any design codes are assigned, the USPTO sends a notice detailing the code(s) selected. The USPTO has updated the text of these notices to assist the applicant both in determining which design codes have been assigned to the mark and in understanding the design coding process. In addition, the updated notices include instructions on accessing a new USPTO webpage on design codes.
The USPTO updated its webpage on design codes (see here
) and now provides information on:
Response to Email
- Why the USPTO uses codes—to allow examining attorneys and the public the ability to “thoroughly and efficiently search the expansive USPTO database for marks that are similar”;
- Examples of codes—the design at the right was assigned at least one code, 03.03.01 for the elephant design;
- How the USPTO determines which codes to assign—by (i) visually scanning the mark and selecting the features to be assigned a code; and (ii) considering the description of the mark from the application;
- How to find out which codes are assigned to a mark—by (i) receiving a notice from the USPTO after an application is filed; and (ii) viewing the USPTO online record; and
- Next steps after assignment of codes—to suggest modification, addition, or deletion of codes; to send an email to TMDesignCodeComments@uspto.gov.
It used to be that if an email was sent to TMDesignCodeComments@uspto.gov
, the sender of the email was not informed about the process or timetable. The new procedure is for the USPTO to send a reply message to the sender that provides information on both the process and the timetable. An example of a reply message follows:
USPTO has received your design search code request.
Thank you for submitting your request regarding the design search codes assigned to your application. If we approve your request, we will update the list of design search codes assigned to your application. A real-time listing of any design codes assigned to your application is available in the Trademark Status and Document Retrieval (TSDR) database under the ‘Mark Information’ tab.
We will process your request within two business days. If your request is granted, you will see the changes to the design codes in TSDR.
For additional information on design coding, please visit the USPTO’s webpage on design search codes.
Training: Pre-Examination Unit
The USPTO regularly provides training to the pre-examination unit, but in light of the updates to the system, instituted quarterly training emphasizing consistency, such as improvements to ensure consistent coding of co-pending files.
In view of the above, the subcommittee, collaborating with the USPTO, successfully moved forward on the goal to increase the accuracy of clearance search results and to reduce unnecessary conflicts.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2017 International Trademark Association