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The USPTO: Separation & Trademark Policy

by | Feb 7, 2018 | Trademark

Seal of the USPTO

               Current Seal of the USPTO

This fall, a U.S. House Budget Committee proposal entitled “Building a Better America: A Plan for Fiscal Responsibility” suggested a change for the United States Patent and Trademark Office (“USPTO”): separation from the Department of Commerce.1 The blueprint, in other words, suggests making the USPTO its own independent agency.2 As a federal agency that grants patents and registers trademarks based on the Commerce Clause and “promotes the Progress of Science” clause of the Constitution, the USPTO advises the President and other governmental persons and organizations on intellectual property concerns facing the nation and the world.3 While lacking in detail, the blueprint states that “[s]ince its establishment in 1903, the Commerce Department has expanded in size and scope to include many activities better suited at other agencies.”4 In fact, the Department of Commerce currently has 13 bureaus and offices, ranging from the U.S. Census Bureau to the National Oceanic and Atmospheric Administration.5

Seeing as it is currently funded by user fees, advocates of the change claim the modification would decrease the amount of funds given to other agencies.6 “While it wouldn’t happen overnight, some feel this could lead to higher quality patents and improve the turnaround time for examiners looking at applications.”7 Given that the estimated time for a trademark application to be reviewed, and a certificate of registration to be granted is almost a year, this could be an exciting move for people looking to register a trademark.8 A Law360 Article describing the House blueprint noted how the change could possibly impact the budget opportunities for the agency and may improve the patents that are granted,9 and another article suggested the change would confirm the status of patents as private property10 Law360’s article Independence May Help USPTO Control Budget also mentions that the trademark process could be improved by quicker review times.11 Generally speaking, it seems the focus of separation advocates is on improving waste and inefficiency within the department by lessening the sharing of funds.12 This proposal also follows the introduction of another House bill similarly proposing an independent Copyright Office.13

But how would this shift impact potential trademark registrants and owners more specifically, as opposed to the entire USPTO office generally? And would it make even more sense to separate the trademark examining process more distinctly, making it its own office so as to create unique application and review processes for copyrights, trademarks and patents?14

Trademarks are inherently different from patents and copyrights.15 In its “About Us” section, the USPTO states that it grants patents based on Article 1, Section 8, Clause 8 of the Constitution, while trademark certificates are granted under Article 1 Section 8, Clause 3 of the Constitution.16 Two distinct clauses of Section 8.17 Trademarks can also last forever, as opposed to copyrights and patents, which have a more limited lifespan.18 Generally speaking, as long as the trademark owner continually uses the trademark in commerce, and files the requisite documents and fees, the trademark continues.19 Furthermore, patent law was designed to promote and protect innovation,20 while trademark law was created to prevent consumer confusion21 It seems to me these different purposes could certainly drive different policy considerations in an agency which covers both subjects, so wouldn’t it make sense to make them distinct offices as well?

“[T]rademark policies are [also] closely connected to the specifics of market context”,22 which, to me, signifies that trademark policy could differ fundamentally from patent policy. Separation from a department that considers patent policies, along with a many number of other things (seeing as it has so many offices and bureaus),23 could arguably have an impact on trademark rights by allowing for more liberal policies regarding trademark registrations in an era of Republican government. If there were an independent trademark office, which wasn’t constrained by the Department of Commerce, wouldn’t it provide for the ability to take to a more liberal stance on trademark policy, as opposed to being constrained by what a Republican-focused Department of Commerce would have wanted or been concerned about?

Either way, it seems separation could allow for increased scrutiny and review of trademark applications, which could, in turn, lead to less litigation over trademarks.24 And a decrease in any fee sharing services means more money to focus on what matters: protecting consumers from confusion.25 All good things if you ask me.

  1. See Gene Quinn, House Republicans Propose USPTO as an Independent Agency, IPWatchdog (Sept. 29, 2017), http://www.ipwatchdog.com/2017/09/29/house-republicans-uspto-independent-agency/id=88670/; Matthew Bultman, Independence May Help USPTO Better Control Budget, Law360 (Nov. 2, 2017), https://www.law360.com/articles/981233/independence-may-help-uspto-better-control-budget. ↩
  2. See Quinn, supra note 1. ↩
  3. See About Us, United States Patent and Trademark Office, https://www.uspto.gov/about-us. ↩
  4. Chairman Diane Black, Building a Better America: A Plan for Fiscal Responsibility, at 50 (2018), https://budget.house.gov/wp-content/uploads/2017/07/Building-a-Better-America-PDF-1.pdf. ↩
  5. See Bureaus and Offices, United States Department of Commerce, https://www.commerce.gov/about/bureaus-and-offices. ↩
  6. See Bultman, supra note 1. ↩
  7. Id. ↩
  8. How Long Does it Take to Register a Trademark?, Gerben Law Firm PLLC (July 20, 2014), https://www.gerbenlaw.com/blog/how-long-does-it-take-to-register-a-trademark/. ↩
  9. See Bultman, supra note 1. ↩
  10. See Quinn, supra note 1. ↩
  11. See Bultman, supra note 1. ↩
  12. See Quinn, supra note 1. ↩
  13. See id. ↩
  14. See generally, Overview of the Copyright Office, United States Copyright Office, https://www.copyright.gov/about/ (describing how the U.S. Copyright Office is a distinct office subsumed under the Library of Commerce and provides Congress policy and legislative support). ↩
  15. See Trademark, Patent or Copyright?, United States Patent and Trademark Office, https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright. ↩
  16. See About Us, supra note 3. ↩
  17. See id. ↩
  18. See Trademark, Patent or Copyright?, supra note 15. ↩
  19. See id. ↩
  20. See Univ. of Colo. Found., Inc. v. Am. Cyanamid Co., 196 F.3d 1366, 1372 (Fed Cir. 1999). ↩
  21. See Leonard Robert Seifter III, Clearing the Brush: The Best Solution for the USPTO’s Continued “Deadwood” Problem, 23 J. Intell. Prop. L. 143, 148 (2015). ↩
  22. Robert G. Bone, Enforcement Costs and Trademark Puzzles, 90 Va. L. Rev. 2099, 2101 (2004). ↩
  23. See Bureaus and Offices, supra note 5. ↩
  24. See Bultman, supra note 1 (noting how the examination process for trademarks could be sped up). ↩
  25. See generally, Seifter III, supra note 21 (describing purpose of trademark law). ↩