Mary Boney Denison: Hitting Targets and Tackling Dead Wood

The trademarks unit of the U.S. Patent and Trademark Office (USPTO) has met or surpassed its quality and production goals for the last 11 consecutive fiscal years.

It’s on target to meet these goals again this year, and that’s due in no small part to Commissioner for Trademarks, Mary Boney Denison.

The office’s current goals for first action and final action quality compliance rates, which consider whether the examining attorney made the right decision on substantive issues, are 95.5 percent and 97 percent respectively.

The USPTO also reviews office actions to see if they meet an “exceptional” standard of quality.

This measure reviews the overall quality of office actions  through a more comprehensive standard looking at excellence in reviewing the search, the writing, the decision, and the evidence.  Only office actions that are excellent in each of these categories meet the standard for “exceptional” quality.

This year the target is 42 percent, a goal that Ms. Boney Denison is very much expecting to meet.

Perhaps more interesting to trademark lawyers is the target for first action pendency (from the date of filing to the first office action). It’s currently set at between 2.5 and 3.5 months—the office met the goal in fiscal year 2016 and, at the end of March 2017, first action pendency was 2.7 months.

Facing Up to the Challenge

Ms. Boney Denison faces two major challenges in her role, one external and one internal to the organization.

The external obstacle is the apparently ever-increasing number of fraudulent solicitations to those in the trademark community.

Customers constantly contact the USPTO over all types of fraudulent emails and mailings they receive, with some being duped into paying fees that they incorrectly assume are coming from the office.

The office is fighting back against this complex problem in five different ways.

“First, we are raising awareness of schemes to defraud trademark owners,” says Ms. Boney Denison.

The USPTO has developed a page on its website to address the issue, together with a video, and a list of fraudulent entities that have been identified.

That’s not enough for the USPTO, however; the email notification for office actions includes a link to that page, and with each trademark registration it mails a bright orange paper with the same information. In addition, it will shortly be adding a warning to its filing receipts.

The second approach involves cooperating with the U.S. Department of Justice on criminal proceedings related to trademark scams.

With USPTO support for the proceedings, two men recently pleaded guilty to stealing nearly US $1.7 million from US trademark applicants and registrants, and a third man was convicted in 2017.

Third, the USPTO is part of an informal interagency working group formed to address this issue.

As part of its fourth method to tackle the challenge, the office and the Trademark Public Advisory Committee are planning a public roundtable on fraudulent solicitations at the office on July 26 this year, in a bid to raise awareness of the issue with the public and other government agencies.

The fifth method arises because fraudulent trademark solicitations are a global issue—the office is considering how to work through the TM5 framework to “attack the issue on a worldwide basis.”

TM5 is a framework through which five IP offices—the Japan Patent Office, the Korean Intellectual Property Office, the European Union Intellectual Property Office, the State Administration for Industry and Commerce of the People’s Republic of China and the USPTO—exchange information on trademark-related matters and participate in cooperative activities.

Internally, the main challenge is the modernization of the office’s IT systems.

The trademarks business unit alone uses 35 interrelated IT systems to accomplish its work and, for years, the trademarks IT systems were intertwined with those for patents.

This meant that if there was an IT problem in one of the patent systems, the trademark systems could be impacted, and vice-versa.

“We have now largely separated the patent and trademark IT systems and have moved on to the modernization of individual systems,” explains Ms. Boney Denison.

In recent years, the USPTO has replaced its electronic Official Gazette and ID Manual with modernized platforms.

Work is underway on many other systems but it will take a number of years to complete, she adds.

Tackling the “Dead Wood”

In October 2016, Ms. Boney Denison announced a “three-pronged” approach to tackling the “dead wood” in the trademark database.

The approach resulted from a pilot program launched in 2012 in a bid by the USPTO to ensure the accuracy of its trademark registry.

It gathered data on whether registered marks were “actually being used” for the products and services listed on the registrations, and found that in “more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods or services queried.”

Although it’s too early to tell how successful the approach will be, it looks like so far, so good.

The first prong consisted of the implementation in January 2017 of a more readable registration declaration.

“We already consider this effort to be a success because we have received quite a few comments indicating that people are now reading the declaration,” says Ms. Boney Denison.

Based on user feedback, the office is working towards some minor changes to the declaration in April 2017.

The second prong is to make permanent post-registration audits. The effective date of the rule was March 21, 2017, with audits expected to begin later this year.

Through this program, the USPTO will randomly select registrations to assess the submission of information, exhibits, affidavits or declarations, and any additional specimens, to ensure that the marks are in use in the United States for all goods/services identified.

For the third and final prong, the office plans to issue a request for comments in the Federal Register by May 2017 on two streamlined Trademark Trial and Appeal Board (TTAB) cancellation procedures.

“We chose to focus on two TTAB options initially because they require regulatory, but not statutory, changes, and could therefore be implemented more quickly,” explains the Commissioner.

A Top Priority

“I was a user of the USPTO for many years before joining the agency in 2011. That has led me to be very interested in offering the best possible customer experience to every user,” she says.

Because of this, Ms. Boney Denison has made the enhancement of customer experience a top priority.

The agency retained an outside consultant to advise on how to improve customer experience at the USPTO.

Ms. Boney Denison’s unit carefully considered the advice and it’s now “working to ensure that each customer experience with trademark personnel at the office is clear, consistent and intuitive.”

These aren’t empty words—Ms. Boney Denison lists several ways in which the USPTO is enhancing the customer experience.

Top of the list is that the office considers that maintaining strong relationships with user groups, listening to their feedback, and implementing their suggestions where possible is vital for a successful customer experience.

“We are here to serve the public and by listening and implementing changes, we can continue to improve the customer experience,” she says.

Before even receiving the consultant’s report, Ms. Boney Denison’s unit decided to kick off the initiative by offering refresher customer service training to all employees.

A customer service hall of fame was also introduced, recognizing every employee who had received four or more customer service awards.

Other initiatives included the hiring of a customer experience administrator, working towards simplifying the filing process, enhancing customer experience through TM5, and expanding its outreach tools.

The office also appointed two plain language writers to make its website and forms more user-friendly.

“With about a third of our customers choosing to proceed without a lawyer, it is very important that we use language that everyone can understand. The plain language effort will be a multi-year initiative to improve our forms and website,” says Ms. Boney Denison.

At the Forefront of Equality

It’s no secret that the USPTO has a much higher percentage of women in senior executive service positions than the rest of the U.S. government.

“The USPTO for many years has been a vanguard of equal opportunity, not just for women, but for any historically disadvantaged group,” explains Ms. Boney Denison.

Immediately preceding her as Commissioners for Trademarks were three women: Anne Chasser, Lynne Beresford, and Debbie Cohn (who is now INTA’s Senior Director, Government Relations, based in the Washington D.C. Representative Office).

Women are on an equal footing with men at all levels of the USPTO, if not higher: Michelle Lee currently serves as the USPTO’s Director, Sarah Harris as General Counsel, and Shira Perlmutter as Head of the Office of Policy and International Affairs.

The agency has 16 affinity groups that act as social groups and career development supports to employees. Three of those are women’s groups: the Network of Executive Women, Women in Science and Engineering, and Federally Employed Women.

“Our agency is truly an equal opportunity employer. We have a very accepting and diverse culture at the USPTO. People are drawn to that,” she concludes.

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