INTELLECTUAL PROPERTY OWNERS, INC. with establishing the PTO as a government corporation. A number of existing government corporations are less than fully self-sustaining. As long as an agency is largely self-sustaining and has a need to respond to market forces in providing services to users, it is suited for government corporation status. One hundred million dollars in public funding would be only 21 percent of the PTO's $486 million budget for 1993. CONCLUSION We submit that prompt administrative reform of the Patent and Trademark Office is essential. The Office's employees are hard-working, dedicated individuals who are doing their best to serve the Office's users, but they are shackled by an outdated, rigid, bureaucratic system. Congress must reinvent the Patent and Trademark Office.3 3 Cf. D. Osborne and T. Gaebler, Reinventing Government, AddisonWesley Publishing Co., Inc. 1992. Messrs. Osborne and Gaebler testified before the Joint Economic Committee of the Congress on Feb. 5, 1992. Senator DECONCINI. Mr. Banner, thank you very much. You have given us some food for thought and some suggestions to which I will come back. I would like to pursue them with you. Mr. Cummins. STATEMENT OF JOHN J. CUMMINS, PRESIDENT, U.S. TRADEMARK ASSOCIATION, NEW YORK, NY Mr. CUMMINS. Thank you, Mr. Chairman. My name is John J. Cummins. In real life, I am trademark counsel for the Procter and Gamble Co. I am appearing here today on behalf of the U.S. Trademark Association in my capacity as chairman of the board and president of that organization. I know, Mr. Chairman, that you are familiar with the USTA and its goals. Those are also set out in my written statement, so I won't go into that. I will say simply that insofar as the current reauthorization law is concerned, USTA believes that it presents an acceptable framework for the U.S. PTO to discharge the original statutory objectives of the Lanham Act; to satisfy the strictures of the 1988 Trademark Law Revision Act, with which you are so well acquainted, particularly those relating to intent-to-use filings; to increase its automation capabilities and efficiencies; and to being preliminary preparation for the possible U.S. adherence to the Madrid protocol. Taking those last three items very briefly, as to intent to use, since such filings were first accepted in fiscal year 1990, they have constituted over 40 percent of all initial registration applications. This fiscal year, they are approached 48 percent of all such applications. USTA applauds the PTO's ability to once again approach its goal of reducing the notice of first action on these new applications. The office's speedy but careful melding of ITU policies and procedures kept the ITU system from being abused. Similarly, USTA is pleased that the implementation of the Xsearch system versions 1.0 and 1.1 are currently on schedule. USTA remains committed to ensuring that any PTO automation initiatives relating to Federal trademark activities demonstrate a clear and compelling justification to Trademark Office users. Finally, the Madrid protocol, which as you know is a free-standing treaty that will allow for multinational trademark protection. Should the United States ratify this treaty, the Trademark Office will become responsible for its implementation in this country. Consequently, it may need to reassess and perhaps restructure its resources in order to ensure that protocol becomes an enhancement to U.S. trademark law and practice. USTA does not oppose those fees or fee increases if they are a reasonable correlation to trademark functions and that are both consistent with and necessary to fulfill the Office's mandate. We do, however, that simply increasing fees as a quick and easy solution will result in subverting the intent of the Lanham Act. We urge this committee and the PTO to review traditional policies and practices, some of which have gone unchanged and unchallenged since the founding of the Agency. For example, although the Trademark Office must serve as an information repository, is it ef ficient for the Office to maintain cumbersome paper search files in this age of electronic communications and data collection. Additionally, as part of an Agency which receives no taxpayer subsidies, it is appropriate that it continue to pay to the GSA an additional fee for building services that the Office may be able to obtain without GSA's assistance? We are pleased, however, that PTO has begun to actively seek the views of its users. We are particularly heartened by the increasingly open and candid dialog with PTO officials such as Acting Commissioner Comer and Assistant Commissioner for Trademarks Jeffrey Samuels. Nonetheless, we realize that the current challenges of the Trademark Office demand that these exchanges take place on a long-term basis for much remains to be done. I think you can summarize our view of this by paraphrasing that old cliche. We are from the private sector and we are here to help. Thank you, Mr. Chairman. [Mr. Cummins submitted the following material:] US. Trademark Association SUMMARY U.S. TRADEMARK ASSOCIATION May 12, 1992 USTA believes that the current reauthorization law presents an acceptable framework for the U.S. Patent and Trademark Office ("USPTO") to discharge the original statutory objectives of the Lanham Act; satisfy the strictures of the 1988 Trademark Law Revision Act ("TLRA") provisions, particularly those regarding Intent-to-Use ("ITU") filings; increase its automation capabilities and efficiencies; and begin preliminary preparation for the possible U.S. adherence to the Madrid Protocol. CURRENT STATE OF THE TRADEMARK OFFICE USTA does not oppose Trademark Office ("TMO") fee increases that bear a reasonable correlation to trademark functions and are both consistent with and necessary to fulfill the Office's mandate. However, the Association strongly believes that increasing fees as a quick and easy solution to the Office's budgetary problems will subvert the intent of the Lanham Act. The Association is pleased that the USPTO has begun to more actively seek the views of its Trademark Office users. INTENT-TO-USE Since ITU filings were first accepted in Fiscal Year 1990, they have constituted over 40% of all initial registration applications. This Fiscal Year, they are approaching 48% of all registration applications. USTA applauds the USPTO's ability to once again approach its goal of reducing the notice of first action on new applications. The Office's speedy but careful melding of ITU policies and procedures has kept the ITU system from being abused. THE MADRID PROTOCOL The Madrid Protocol is a free-standing treaty which allows for multi-national trademark protection. Should the U.S. ratify the treaty, the TMO would become responsible for its implementation in this country. Thus, it may need to reassess and perhaps restructure its resources in order to ensure that the Protocol becomes an enhancement to U.S. trademark law and practice. TRADEMARK OFFICE AUTOMATION USTA is pleased that the implementation the X-Search system versions 1.0 and 1.1 are currently on schedule. USTA remains committed to ensuring that any USPTO automation initiatives relating to federal trademark activities demonstrate a clear and compelling US. Trademark Association STATEMENT JOHN J. CUMMINS CHAIRMAN OF THE BOARD AND PRESIDENT Subcommittee on Patents, Copyrights and Trademarks May 12, 1992 Mr. Chairman: The United States Trademark Association ("USTA") appreciates the opportunity to present our views on Trademark Office resources and activities as they bear on the current and future needs of the trademark community. As always, we appreciate the opportunity to work with you, the members of this Committee and your excellent staff. My name is John J. Cummins and I presently serve as Chairman of the Board of Directors and President of USTA. I am employed by The Procter & Gamble Company as Corporation Counsel and Assistant Secretary. I am also a member of the American Bar Association, the Cincinnati Intellectual Property Law Association and am past president of the latter. I have been admitted to the bar of the states of Missouri, Florida, and on a corporate basis, Ohio. Like all USTA officers, Board members and Committee chairpersons, I serve on a voluntary basis. USTA is a 114-year old not-for-profit membership organization. Since its founding in 1878, its membership has grown from twelve New York based manufacturers to over 2400 corporations, package design firms and professional associations from across the United States and approximately 85 countries. USTA's membership crosses all industry lines, spanning a broad range of manufacturing, retail and service operations. Our members include both small and large businesses and all sizes of general practice and intellectual property law firms. Today, USTA will concentrate on those activities of the Trademark Office which will need the attention of this Committee and the U.S. Patent and Trademark Office ("USPTO") in the years immediately ahead. USPTO reauthorization is a critical area, followed closely by the Trademark Law Revision Act's ("TLRA") impact on the Office, the filing of Intent-to-Use ("ITU") applications, the Madrid Protocol, and the ever-present problem of automation. First, however, I would like to give you some background on the Association. USTA has five principal goals; To support and advance trademarks as an essential element of effective commerce throughout the world; To protect the interests of the public in the use of trademarks; |