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  NIPRA National Intellectual Property

  Researchers Association
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> August 15, 2006

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

Re: FR Doc. Vol. 71, No. 121 page 36065 Request for Comments on Removal
of Paper Search Collection of Marks That Include Design Elements

Dear Ms. Hannon:

The United States Patent and Trademark Office (USPTO) is proposing to
remove the paper search collections of trademark registrations from its
public search facilities and replace them with electronic information
collections. The National Intellectual Property Researchers Association
(NIPRA) is opposed to such a transition at this time as the USPTO has
provided no support for its assertions regarding the availability and
reliability of the electronic search system. Thus the proposed plan does
not address the potential adverse impact on the public users of the
systems and renders the it arbitrary and capricious.

The National Intellectual Property Researchers Association, Inc. (NIPRA)
is a not-for-profit trade association of individuals and businesses that
conduct patent and trademark searches for attorneys, inventors,
businesses and other patent or trademark owners or assignees. NIPRA is
dedicated to the maintenance and improvement of the United States Patent
and Trademark Office with particular emphasis on improving the ability
of its members to access patent and trademark information so that they
might effectively support the Intellectual Property Community.

**[Previous comments, actions and USPTO reports]{.underline}**

The USPTO has previously sought public comment and held public hearings
on the proposed removal of the paper search records. Numerous comments
were reviewed and analyzed, resulting in the development of a plan
purportedly addressing the issues raised. On July 24, 2002, the USPTO
submitted a certification and report to Congress detailing a plan for
the removal of a portion of its paper search collection. As a result of
a challenge filed by NIPRA in the United States District Court for the
Eastern District of Virginia, that certification was rescinded by the
USPTO on December 9, 2002 (Exhibit A). In response to the NIPRA
complaint regarding the volume of errors in the USPTO\'s electronic
system, the USPTO decided to retain that portion of the paper collection
that includes design coding, and a modified plan was submitted to
Congress with a new certification on May 9, 2003. Subsequently, the
USPTO entered into a stipulated settlement in National Intellectual
Property Researchers Association, Inc. v. Rogan, Civ. A. No. 03-808-A
(NIPRA v. Rogan). Among other terms, the settlement required that NIPRA
provide a list of trademark registrations it considered not searchable
and/or retrievable as well as a written, detailed description of
systemic problems to the USPTO Commissioner for Trademarks. Pursuant to
the terms of the settlement, NIPRA provided a detailed description of
the systemic problems with the USPTO databases and tens of thousands of
examples of trademarks it considered not searchable and/or retrievable
(Exhibit B). To date, a large percentage of the reported errors have not
been corrected nor all the systemic problems addressed. Moreover, the
USPTO response to NIPRA members electronically reporting several
thousand errors in the last quarter of 2005 (Exhibit C) was to disable
the primary search function used to locate the erroneous records.

In 2002 the USPTO attempted to justify the elimination of the paper
record with a study of the design code error rate (Design Search Code
(DSC) Quality Review) initiated by the Assistant Commissioner for
Trademarks in response to the published results of previous USPTO
contractor and independent studies. On January 9, 2003, in response to a
complaint filed by NIPRA, the Department of Commerce Office of the
Inspector General (DOCOIG) initiated an investigation into the validity
of the USPTO certification to Congress and the supporting DSC Quality
Review. At the request of the DOCOIG and as part of the investigation,
NIPRA conducted an audit of the DSC Quality Review. The results of that
audit brought into question the parameters and validity of the DSC
Quality Review (Exhibit D). At its conclusion, the investigation report
noted that although it found no evidence that the Commissioner for
Patents and Trademarks provided false statements to or intentionally
misled Congress as he relied upon staff for technical information it did
however note that the Assistant Commissioner for Trademarks failed \"to
fully disclose information critical to a complete understanding of the
DSC Quality Review\" a failure that \"rendered not only the Review, but
also the Congressional testimony and report which relied in part upon
the Review\'s findings, vulnerable to challenges\" (Exhibit E).

**[The current USPTO plan]{.underline}**

In its June 23, 2006 Federal Register notice, the USPTO asserts that it
has taken additional steps to improve the quality and integrity of its
electronic search system. While NIPRA concedes that the data quality of
the electronic search system has improved, upon review of the current
state of those systems, NIPRA is convinced that the USPTO is still not
ready to transition to an exclusively electronic search environment.
Although the automated search systems are superior to those in place in
2002, those improvements came only as a result of the NIPRA v. Rogan
consent agreement and at present the systems still suffer a high error
rate in the historic data and an 11% error rate among those recently
issued registrations containing design coded elements.

Moreover, the USPTO has again failed to undertake a review of the
system\'s accuracy and reliability prior to its publication of a plan to
eliminate the paper search collection. Shortly after the publication of
the Federal Register notice, NIPRA members questioned Commissioner for
Trademarks Lynne Beresford and Deputy Commissioner for Trademark
Operations Debbie Cohn at the July 19, 2006 Monthly Public Users Meeting
as to whether any studies had been conducted in support of the plan to
determine the current error rate in the X-Search database. Their direct

queries were met with silence. Subsequently, on July 21, 2006, a NIPRA
member filed a Freedom of Information Act (FOIA) request for \"any
reports, studies, memoranda and correspondence including electronic
records and e-mail, created, initiated, forwarded, sent or received
concerning studies of the image data quality and design coding in the
X-Search database\". On July 31, 2006 the USPTO Office of the General
Counsel responded that the USPTO had no records responsive to the
request (Exhibit F).

In contrast, upon receipt of the instant Federal Register notice, NIPRA
immediately conducted a study of the error rate in design codes for
recently issued registrations containing a design element. In an effort
to review a representative sample, NIPRA studied the design codes issued
for all registrations issued during the month of April 2006. Of the 2712
registrations issued that contained a design element, NIPRA determined
that 293 or 11% contained an error such that a dominant element or a
mark in its entirety would not be located by an experienced searcher or
trademark examining attorney using an overly broad search strategy
designed to overcome the system\'s deficiencies. NIPRA asserts that if a
more discriminating methodology, one designed to mimic the strategy of a
novice searcher, were used, the error rate would double.

Given that the General Counsel\'s Office has asserted that no records
X-Search data quality studies exist, NIPRA asserts that the USPTO has
again conceived a plan without empirical evidence to support its claims,
claims that are clearly refuted by the results of the most recent NIPRA
study. It thus follows that the USPTO electronic search systems may not
be mature or reliable and although they may provide similar
functionality to the paper collections, they do not provide the more
important criteria, equivalent results.

**[Implementation]{.underline}**

Notwithstanding its assertions regarding the reliability of the
electronic search system, it is telling that in the instant Federal
Registration the USPTO, in detailing its plans, has conceded one of long
standing arguments against the elimination of the paper records. NIPRA
has consistently maintained that a dual search of both the electronic
and paper records is necessary given the high error rates in both
indexes. As the electronic and paper systems rely on different design
coding schemes, NIPRA has consistently maintained that the likelihood of
a mark being coded improperly in both systems is remote and that a dual
search will result in a superior result set. Among the USPTO\'s proposed
changes is the addition of an additional design code field that would
mirror the existing coding system used in the paper files. The USPTO
asserts that addition of this search field will result in a \"highly
reliable system that is far superior to the existing paper system\" as a
design coding error made in one system \"will be found in a search using
the other coding system, since it is unlikely that the same error would
be made in both systems\". While NIPRA applauds the USPTO\'s epiphany
with regard to the systemic change, it notes that the implementation is
ill-conceived and unsatisfactory in that it will not be applied to those
applications filed or registrations issued before the date on which the
system is implemented, resulting in tens of thousands of marks remaining
unsearchable.

Conversely, the USPTO continues to maintain that the X-Search and TESS
databases contain \"Government insignia protected by U.S. law or by
Article 6 ter of the Paris Convention, and

insignia that various federally and state recognized Native American
tribes have identified as their official tribal insignia\". Even a
cursory examination of the databases will indicate that the Paris
Convention records are incomplete and a search for the Government
insignia contained in the paper search records reveals that many have
been omitted. Similarly, the paper search records contain notices
regarding weapons systems names, chemical compounds and certain Federal
statutes such as that which limits use of the term OLYMPICS and its
derivatives, notices that have not been included in the electronic
databases. It should be noted that X-Search and TESS do not fulfill the
statutory requirement that the USPTO maintain a collection of United
States trademark registrations arranged to permit search for and
retrieval of information as they are composed solely of bibliographic
and image data that has been keypunched or tagged by USPTO employees and
contractors and are not collections of the trademark registrations as
issued. Given the General Counsel\'s fine interpretation of Section
4804(d)(2) in its determination that the pending trademark applications
were not subject to the Act, the same fine interpretation should be used
to analyze the electronic search systems compliance with Section
4804(d)(2

**[AIPA § 4804(d)(2)]{.underline}**

The USPTO asserts that because it will \"continue to maintain all
existing word marks in non-electronic form, i.e., on microfilm, the
certification requirements of AIPA § 4804(d)(2) are not applicable to
such marks\". NIPRA contests the USPTO position as the subsection
clearly states that the USPTO \"shall not, pursuant to the amendment
made by paragraph (1), cease to maintain, for use by the public, paper
**or** microform collections of United States patents, foreign patent
documents, and United States trademark registrations\" (emphasis added).

The plain language of § 4804(d)(2) requires the USPTO to provide an
opportunity for public comment on the issue of whether it should \"cease
to maintain\" the paper collections; not on the plan for their removal.
The discussion of the requirement that the \"plan\" be submitted to
Congress is in the clause following the requirement for public comment.
When § 4804(d)(2) is read without the subsequent clause which requires
submission of a plan to Congress, the language clearly indicates that
the subject of the notice and comment opportunity was to be whether or
not the USPTO should \"cease to maintain\" the paper collections.

**[History of USPTO Automation efforts]{.underline}**

The inadequacy of the electronic search systems and the USPTO\'s
development practices has been well documented for more than twenty-five
years. Despite consistent negative reports by the Government Accounting
Office (GAO) and the Department of Commerce\'s Office of the Inspector
General, the USPTO still has not learned from their previous mistakes.
Since as early as 1979 the GAO has raised concerns about the
effectiveness of electronic searching and noted that the USPTO has a
difficult time defining quality measures, electronic systems development
costs and proper systems specifications. These findings are repeated
annually through the mid 1990\'s in a series of GAO reports lambasting
the agency for poor systems development, extravagant costs and
questionable contractor agreements. Similarly, as late as March 2001 the
Office of the Inspector General (OIG) had found weakness in the
development of electronic

search systems. In recent years similar problems have plagued the
development and deployment of new electronic systems i.e., the Madrid
filing system, IFW and EFS, resulting in investigations, delays measured
in years and cost overruns in the millions.

These official reports bear striking similarities to the comments
received by the USPTO in response to its initial Notice of Request for
Comments on Development of a Plan To Remove the Patent and Trademark
Classified Paper Files From the Public Search Facilities published in
the Federal Register August 27, 2001. The fifty comments received were
overwhelming negative and reiterated many of the same concerns expressed
by the GAO and OIG. The USPTO response to the comments was to dismiss
the substantive comments and questions regarding the plan to eliminate
the paper files as not germane to the issue. Given that the USPTO asked
for comments on the development of a plan to remove the files rather
than comments on whether the existent systems were adequate to proceed
with the development of a such a plan, such contempt for the public
input is not surprising. Nevertheless, it is curious that of the fifty
Reponses received to the notice, not one had a single comment or
question that the USPTO considered \"germane\" to the issue.

Given the USPTO\'s mandate to disseminate information it would seem
reasonable that the USPTO should strive to create and maintain the most
accurate and complete record possible. Despite the expenditure of untold
millions of dollars, many of the problems identified by NIPRA as well as
in previous GAO, OIG and independent reports still remain and have not
been addressed by the agency. Thus, it seems premature to eliminate the
paper search file until such time as significant improvement in the
electronic systems data integrity can be verified.

NIPRA recommends that the USPTO immediately commission an independent
study of the automated search systems by an independent organization to
ensure correction of the existing data and a review of guidelines to
correct the data flow and ensure future data quality. This study should
consist of a side-by-side comparison of the electronic and paper search
systems until such time as the results of an exclusively electronic
search are consistently the equivalent of a combined electronic and
paper collection search. Pending the results of that study the agency
must suspend all efforts to eliminate the paper trademark collections.

Very truly yours

> ![](media/image1.png){width="3.5631944444444446in"
> height="0.8854166666666666in"}

Robert B. Weir

> President