___ ..-. Il~lit.cvl __. St;~t.c*s_-__- ...-.-...__. _-.l_-..-.-_.-(;vnvral --~-I-- Acwrlnl,illg Of’l’iw _- ICoport~t,o thf (:hairrnan, Sutxtornmit,Ce~~ on ( GNU-ts,Ir~t,ellectual Propert,y, and the Administration of’ Justice, Cornrnit,tee on the ,Judiciary , House of IieI;>r~~~sent,atives o(*tofwr I!)!)0 TRADEMARK AUTOMATION Information on System Problems and Planned Improvements HI lIlllllIlIl Ill 142601 RESTRICTED --Not to be released outside the General Accounting OfIke unless speclflcally approved by the Office of Congressional Relations. _,._...-.._I., . - . I. I .__. . -.. .- ._ _..... ._..-.._-._.. .--.- i”~/ I, 1 &T&o United States General Accounting Office Washington, D.C. 20548 Information Management and Technology Division B-240678 October 9,199O The Honorable Robert W. Kastenmeier Chairman, Subcommitteeon Courts, Intellectual Property, and the Administration of Justice Committee on the Judiciary Houseof Representatives Dear Mr. Chairman: This report provides information you requestedon T-Search-an auto- mated search and retrieval system at the Patent and Trademark Office (PID),Department of Commerce.The system has been used since 1986 to help determine whether trademarks submitted for registration are con- fusingly similar to pending or registered trademarks. In March 1990, you requestedthat we do somepreliminary work to identify users’ con- cerns about T-Searchand determine whether users are satisfied that paper files containing trademark registration information are being ade- quately maintained to serve as a backup to the automated system. You also asked that we obtain information on PTO’S actions and plans to improve the automated system. In preparing this report, we interviewed PTO trademark and automation officials, several PTOexamining attorneys,’ somepublic users of the system, and officials of the United States Trademark Association, which representstrademark attorneys and many trademark owners. We also reviewed related documents,plans, and records of public hearings. PTO officials reviewed a draft of this report and generally agreedwith its contents. We did not analyze m’s assessmentof the system’s problems, the reasonablenessof PID’Splanned short-term actions to improve the current system, or m’s plan to replace the current system with a new system. As agreed,we will do additional work early in 1991 to deter- mine whether PTOis making progressin addressingthe issuesidentified in this report. Appendix I more fully describesour objectives,scope,and methodology. PTO’S examining attorneys and public searchers,the primary users of T- Results in Brief Search,told us that they are dissatisfied with several aspectsof the Y %everal of these attorneys are also officials of the National Treasury Employees Union, Chapter 246, The Trademark Society, which represents P’IO examining attorneys. Page 1 ’ GAO/IMTECBl-1 Trademark Automation E-240878 system. They said that it takes too long to perform searcheson the system and that the data is often inaccurate and unreliable. Several public users state that they prefer to rely primarily on PX?Spaper regis- tration files becausethey find T-Searchto be slow, inaccurate, and cum- bersometo use; however, they believe that the quality of the paper files is deteriorating. The attorneys also maintain that their accessto the T- Searchsystem is constrained by the limited number of computer termi- nals available to them and the need to periodically shut the system down to backup data files and maintain the data base. Many of these problems have been raised and discussedat PTO’S public hearing and public advisory committee meetings.PTDtrademark and automation officials have concludedthat T-Searchneedsto be replaced with a new system. The requirements for the new system, which is to be implemented by the mid-1990s, are being defined at this time. PIDalso plans to make someshort-term improvements to the current system, such as making someexisting terminals more accessibleto examining attorneys and decreasingthe amount of time that T-Searchis shut down. However, the main problems-slow searchtimes and inaccura- cies in the data base-are likely to continue until PTOformulates and completesadditional actions to resolve them. While p1~attempts to resolve system problems, it is attempting to reduce the T-Searchwork load by requesting its examining attorneys to perform 20 percent of their searchesusing the paper files. Trademarks are words and designsused by manufacturers or merchants Background to identify their goodsor servicesand distinguish them from those man- ufactured or sold by others. ~10’sTrademark Office examinestrademark applications for compliancewith various statutory requirements to pre- vent unfair competition and consumerdeception and, if approved, regis- ters the trademarks to help protect their owners’ rights to them. Recent changesin trademark law have prompted a dramatic increasein the number of trademark applications. In the first 8 months of fiscal year 1990-the first year of operations under the changedlaw---p?0 received nearly 90,000 applications, comparedto about 83,000 for all of fiscal year 1989. In 1980, the Congressdirected PTOto identify its automation needsand, if necessary,develop an officewide automation system. Oneresult of ~‘10’sautomation efforts is T-Search,a computer-basedsearch and retrieval system intended to eventually replace the office’s trademark registration paper files, currently containing about 1 million trademark Page 2 GAO/lMTEC-91-l Trademark Automation records. r&s examining attorneys use T-Searchto determine if an appli- cant’s trademark is confusingly similar to pending or registered trade- marks. The public can also review trademark records in PTD’S public searchroom either by using T-Searchcomputer terminals or the paper files. T-Searchwas not fully operational when it was acceptedfrom the devel- opment contractor in June 1984. In a previous report, we noted that PZD did not thoroughly analyze users’ needsor fully test the system before acceptingit from the contractor.2Examining attorneys eventually began using T-Searchas their primary tool for word searchesin August 1986 and for design searchesin January 1988. T-Searchhas comeunder criticism by both PTOexamining attorneys and public users. For example, an August 1989 memorandum from the examining attorneys’ union to the Assistant Commissionerfor Trade- marks maintained that the time to complete a searchwas increasing due to poor system performance. In June 1989,the United States Trademark Association sent a detailed critique of the system to the Commissionerof Patents and Trademarks, outlining problems regarding very slow search times and cumbersomesearchprocedures.During a public hearing before the Commissionerin 1989, somepublic users complained about slow searchtimes and strongly questionedthe system’s reliability. PID’Sgoal for T-Searchwas to provide examiners with the capability to Users Complain of conduct a trademark search as fast or faster than manual searchesof Slow Search Times the paper files (which averaged 16 minutes for word searches),without the problems associatedwith maintaining the integrity of the files. According to m’s May 1988 test of T-Search,the averagesearchtime beginsto exceedthe system’s design goal of 16 minutes when the number of concurrent users reaches24 to 26. Weexamined usagedata for May, June, and July 1990. While the average number of concurrent users over the period never reachedthe 24 to 26 user level, the peak number of concurrent users exceeded26 on over half of the regular working days (Monday through Friday, excluding holidays). All of the 17 examining attorneys we interviewed complained that search times on T-Searchwere too long. SomeP?Dattorneys, as well as the attorneys’ union, stated that it takes an averageof 20 minutes to ‘Patent and Trademark Office Needs to Better Manage Automation of Its Trademark Operations (GAO-8, Apr. 19,1986). Page 8 GAO/lMTECBl-1 Trademark Automation . B-240678 complete a design search.This type of search involves comparing an applicant’s trademark design to designsalready registered or pending. Someattorneys maintained that such searchescan take as long as 30 to 46 minutes. FTOtrademark and automation officials agreethat average searchtimes have becometoo long. Degradationsin search time can affect the attorneys becausethey have production goals associatedwith their performance appraisals. Many of the attorneys stated that T-Search’sslow searchtimes impair their ability to meet these production goals.Sometold us that the only way they can meet their goals is by working extra hours or not using all of the search strategies available to them, resulting in reviews that are not as comprehensiveas they would like. In addition, someattorneys, citing ~10’splan to hire about 80 new examining attorneys in fiscal year 1990, are worried that this hiring will increasethe number of concurrent users of the system and result in even longer searchtimes. Nearly all of the six public users we spoke with, as well as officials of the United States Trademark Association, also maintain that the system’s search times are too long. Two public users testifying at a 1989 PIDpublic hearing characterized search time as being their most serious problem with T-Search. SomePIDexamining attorneys complained that there are not enough T- Attorneys’ Access to Searchcomputer terminals available and that too often they cannot find T-Search Is a free terminal when they need one. Currently, there are 43 terminals Constrained available for use by about 160 examining attorneys. Also, the attorneys said that they cannot use T-Searchafter 6 p.m. becausethe system is shut down to back-up data files. The system is also shut down about every other month on Fridays and Saturdays for data basemaintenance.One attorney told us that computer terminal availability and searchtime problems worsen a couple of days before each of the scheduledshut downs, as the attorneys rush to meet their production goals. Page 4 GAO/JMTEGBl-1 Trademark Automation E240678 Data Base Along with slow searchtimes, T-Searchusers are greatly concerned about inaccuraciesin the system’s data base.Many of the examining Inaccuracies May attorneys and public users we interviewed said that the data basehas Compromise Quality numerous data errors-such as misspelled words, missing data, or data entered into the wrong data fields-that may compromisethe quality of of Registration Process their trademark searches.The Deputy Assistant Commissionerfor Trademarks said that someof the errors are due to the data entry con- tractor’s failure to meet accuracy requirements, which call for no more than 3 percent of the trademark applications to contain data entry errors. According to PTDofficials, a recent quality check of data entry performance showed that 10 percent of the applications contained at least one data entry error. Although a software program is used to check the accuracy of spelling at the data entry point, it doesnot prevent all spelling errors from reaching the data base.For example, “Coruette” had been mistakenly entered for “Corvette,” and “PG News” for “PC News.” Attorneys also complained that trademark design coding done by P?D staff is inaccurate and inconsistent. Designcoding is the processof assigningindex numbers to trademarks in order to classify them according to the various design elementsthat make up the trademark, such as geometric shapes,objects in nature, or depictions of animals and people. For example, one particular trademark-a personified ear of corn wearing a sombrero and playing a guitar-is codedunder several design categories,such as plants representing people; playing musical instruments; husked ears of corn; sombrero; and guitars, banjos, uku- leles. Becausethe classification processis interpretive, it is to some extent subjective. T-Searchusers said they often disagreewith the clas- sification data in the system. If a design is classified inappropriately, T- Searchusers may have trouble retrieving it from the data basewhen doing searchesof designsthat contain similar elements. According to PID’Sdesign searchcoding supervisor, applicants often submit trademark designsthat are unclear, making accurate coding dif- ficult. In addition, the design codesare not always revised to reflect modifications made to a trademark design during the application review and approval process.Consequently,coding representing the original rejected design-rather than the modified and approved design- remains in the T-Searchdata base. Page 5 GAO/IMTEGBl-1 Trademark Automation . B-240678 T-Search Can Be Both EYIDattorneys and public users cited a variety of problems that makes T-Searchdifficult to use or otherwise limits the usefulnessof the Cumbersometo Use system. Among the problems cited most often are: l T-Searchoften doesnot allow a user to cancel a searchonce it is started, resulting in wasted time. l The proceduresfor printing designsare inefficient, in that they require multiple steps.Also, the printers often are not in working order. l Phonetic searches,which are designedto find variations in the spelling of words (e.g., “E-Z” for “easy”), often produce unreliable results. . Truncation, a search function to assist in reviewing trademarks, is used to find strings of consecutiveletters embeddedin words. Users complain that the function is of limited use becauseit cannot searchfor two-letter word endings, such as -on, -up, -ox, and -ex, which are commonplacein trademarks. Most of the public users with whom we met said that they dislike T- Complaints About the Searchbecauseof slow searchtimes, data errors, or other problems. Quality of the Paper Several of them prefer to search the trademark registration paper files Files by hand, using T-Searchas a secondarysearchtool. Someof the public users maintain, however, that the quality of the paper files has been deteriorating due to missing or out-of-date information. United States Trademark Association officials stated that the condition of the paper files was always poor and has beengetting worse. In its 1982 Automation Master Plan, PTOidentified the growth of its paper files, increasing resourcesrequired to maintain them, and steadily degrading quality of the files as impediments to carrying out its mission effectively. Oneof the prime reasonsfor developing T-Searchwas to improve the accuracy of the trademark information. According to FKItrademark officials, the policies and proceduresfor maintaining trademark paper files have not been changedsince T- Searchwas implemented. They believe that perceptions that the paper files are worse than ever are due to the fact that users now have an opportunity to compare these files with the information maintained in T-Search. Page I3 GAO/lMTEG91-1 Trademark Automation B-240678 PlD’s Actions to P?Dtrademark and automation officials are aware of the complaints about searchtime, computer terminal availability, data baseaccuracy, Improve Trademark and automated search functions. For example, in an August 1989 letter Automation to the union representing the examining attorneys, the Assistant Com- missioner for Trademarks acknowledgedthat T-Searchhas deficiencies, primarily with searchtime, and that managementwas doing everything possibleto improve system performance. In addition to users’ com- plaints, IY~D officials are concernedabout the need to handle sharp increasesin the office’s work load expectedduring the 1990s.P?Desti- mates that annual filings of trademark applications will increasefrom 120,000in fiscal year 1990 to over 257,000 in fiscal year 1998. Planned Replacementof PTOautomation and trademark officials maintain that it would not be T-Search wise to make major changesin the current system and that the time has cometo take advantage of advancesin technology. Consequently,EYID plans to replace the T-Searchsystem with a new system by the mid- 1990sin order to improve trademark automation and meet the increasing work load. PYUhas prepared a draft long-rangeimprovement plan, as well as a draft functional requirements document describing the capabilities neededby users of the system. pT0plans to issue a request for proposals to acquire the new system in the spring of 1991, after it finalizes the functional requirements document and completesthe feasi- bility study, benefit/cost analysis, acquisition plan, and market survey. Interim Improvements P?Dofficials plan to make someneededimprovements in the existing T- Planned for T-Search Searchsystem while the new system is being developedand installed. In an August 2, 1989, memorandum to the examining attorneys’ union president, the Assistant Commissionerfor Trademarks stated that YIU planned to have improvements in place by April 1990 that should result in marked improvement in searchtime, particularly for design searches, and should provide the necessarycomputer capacity to handle an increasedwork load. In February 1990,the Deputy Assistant Commis- sioner for Trademarks circulated for internal review a draft of a short- term improvement plan. The draft, however, was criticized by FW auto- mation officials on the grounds that it was incomplete, lacked details on the proposed improvements, and did not addresspotential procurement problems. For example, the plan called for a replacementof the current computer terminals by April 1990 using an existing contract. The Department of Commercesubsequently determined that a separatepro- curement would be needed,which could take about 18 months to complete. Page 7 GAO/IMTECBl-1 Trademark Automation B-240678 P?Dofficials were redrafting the short-term plan when we concludedour audit work in August 1990. They did, however, state that they will soon take several actions that they believe will alleviate someof the system’s problems: . p1~plans to move T-Searchsoftware to a more powerful mainframe computer by late December1990. Use of this computer is expectedto reduce the amount of time that the system is shut down for data file backup ‘tnd maintenance of the data base. . In an effort to speedup on-line retrieval somewhat, mo is exploring the possibility of operating multiple copiesof the T-Searchsoftware and data baseconcurrently on the new mainframe computer. . P?Dwill relocate computer terminals currently in individual offices so they can be shared amongthe examining attorneys, thereby increasing the availability of terminals. In addition, the system’s hours of operation have been extended 2 hours each working day from 6 p.m. to 8 p.m. According to 1yr0trademark and automation officials, they do not expect any of these actions to greatly improve searchtimes. They said that they have not yet determined the primary causesof slow searchtimes, but plan to do so on a priority basis. At present, they believe that the problem may involve limitations in PTO’S communications system and computer terminals. Other Improvement In addition to the actions listed above,m officials said that they are Actions considering placing trademark data on compact disks, a technology for storing and quickly accessingvery large quantities of data. They said that examining attorneys could use compact disks to conduct simple searchesthat would not require current data, such as looking up trade- mark registration numbers. This would help keep T-Searchterminals free for more complicated searches.Officials also said that they are con- sidering making T-Searchavailable for text searchesthrough standard personal computers, without the user-friendly interface currently employed on T-Searchterminals. They said that this would tend to speedsearch and retrieval of textual material for users, although they would not be able get design imageson their computer screens. PTOis also developing software to improve spell checking capabilities. According to P’RItrademark officials, the new spelling program has been tested and is currently being fine tuned. They said that the data base, except for the trademarks and ownership data fields, has been spell checked.About 104,000potential errors have been identified and the Page 8 GAO/IMTECBl-1 Trademark Automation lb240678 correction processhas begun. They estimate that it will take about 2 staff years of effort to correct the mistakes. PTOofficials also said that the data entry contractor has beenput on notice to improve perform- anceor face termination of its contract. Recognizingthat current problems with T-Searchmay worsen as more Partial Fallback to the examining attorneys are hired and use the system, P?Dofficials have Use of Paper Files decidedto allow the attorneys to use the paper files for their searches, just as was done prior to automation. Specifically, PIDofficials have asked that the attorneys, on a voluntary basis, conduct about 20 percent of their searchesusing the paper files. This practice would begin in Sep- tember 1990 and continue indefinitely, until problems with the auto- mated system are resolved. PIUis requiring that all examining attorneys hired since August 1986-the time automated searchingwas imple- mented-take training in the use of paper fiies. PID officials said that this training would involve most of the attorneys. Conclusions fied with its performance, particularly the slow searchtimes, PTOtrade- mark and automation officials recognizethe needto improve trademark automation and are working on plans to improve the current system and eventually replace it with a system that they maintain will better meet the users’ needs.Both PTO’S short-term and long-term plans were still in draft form when we concludedour audit. Although p1~officials intend to take someshort-term actions soonthat they expect will mitigate some problems with the T-Search,they say that these actions are unlikely to result in substantially reduced searchtimes. As arranged with your office, unless you publicly announcethis report’s contents earlier, we plan no further distribution until 30 days after the date of this letter. We will then send copiesto interested congressional committees;the Secretary of Commerce;the Commissionerof Patents and Trademarks; the Director, Office of Managementand Budget; the Administrator of General Services;and other interested parties. Page 9 GAO/IMTEGBl-1 Trademark Automation E240678 Should you have any questions about this report or require additional information, pleasecontact me at (202) 2759676. Major contributors are listed in appendix II. Sincerely yours, +f* V JayEtta, 2. Hecker Director, Resources,Community, and Economic Development Information Systems Page10 GAo/IMTEGSl-1 TrademarkAutomation Page 11 GAO/IMTEG91-1 Trademark Automation Appendix I Objectives,Scope,and Methodology At the request of the Chairman of the Subcommitteeon Courts, Intellec- tual Property, and the Administration of Justice, HouseCommittee on the Judiciary, we reviewed the Patent and Trademark Office’s (P?D)T- Searchsystem. As agreed,our objectives were to conduct someprelimi- nary work to (1) identify users’ concernsabout T-Search,(2) determine whether users are satisfied that paper files containing trademark regis- tration information are being adequately maintained to serve as a backup to the automated system, and (3) obtain information on P@S actions and plans to improve the automated system. We did not analyze P?D’sassessmentof the system’s problems, the reasonablenessof PID’S planned short-term actions to improve the current system, or ma’s plan to replace the current system with a new system. As agreed,we will do additional work early in 1991 to determine whether mo is making pro- gressin addressingthe issuesidentified in this report. We interviewed officials in PID’SOffice of the Assistant Commissioner for Automation and the Office of the Assistant Commissionerfor Trade- marks to obtain their views on how well T-Searchis meeting users’ needsand what FTD’Splans are for addressingproblems with the system. We also reviewed PTO’S1987 Automation Master Plan, as well as short- term and long-term plans for improving trademark automation, To obtain users’ views on the adequacyof the system and paper regis- tration files, we interviewed: . 14 PTOexamining attorneys, mostly chosenby PIDmanagement; l 3 examining attorneys who are officials of the National Treasury EmployeesUnion, Chapter 245, The Trademark Society, which repre- sentsthe examining attorneys; l 6 public users; and l officials of the United States Trademark Association, which represents trademark attorneys and trademark owners. We also reviewed documentsprepared by mo examining attorneys and public users describing their concernsregarding the T-Searchsystem and the paper files. In addition, we examined the records of recent PID public advisory council meetings and public hearing dealing with T- Searchissues, We conducted our work from April to August 1990 at the Department of Commerce’sP?Din Arlington, Virginia, and at the United States Trade- mark Association in New York City. We performed our work in accor- dancewith generally acceptedgovernment auditing standards. PTO Page 12 GAO/IMTEG91~1 Trademark Automation Appendix I ObjectIvea, Scope, and Methadology automation and trademark officials reviewed a draft of this report and generally agreedwith its contents. Page 13 GAO/IMTEGBl-1 Trademark Automation Appendix II Major Gmtributo~ to This Report David G. Gill, Assistant Director Information John P. Finedore, Assignment Manager Management and Mark Bilsky, Evaluator-in-Charge Technology Division, Washington, D.C. Page 14 GAO/IMTECWl TndemuL Automation c * Page 15 GAO/IMTJtC91-1 Trademark Automation Related GAO Products Trademark ADP System: Patent Office Should Analyze Alternatives Before Contract Award (GAO/IMTEG87-44, Aug. 27,1987). Patent and Trademark Office Needsto Better ManageAutomation of Its Trademark Operations (GAO/IMTEG85-8, Apr. 19,1986). (610666) Page 16 GAO/lMTEGBl-1 Trademark Automation II,. ,”,,,,. _..‘_ .. ..__.- -...-.-._.-- .-___- __-_
Trademark Automation: Information on System Problems and Planned Improvements
Published by the Government Accountability Office on 1990-10-09.
Below is a raw (and likely hideous) rendition of the original report. (PDF)