oversight

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)

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                                  ICoport~t,o thf (:hairrnan, Sutxtornmit,Ce~~
                                  on ( GNU-ts,Ir~t,ellectual Propert,y, and
                                  the Administration of’ Justice,
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                                  TRADEMARK
                                  AUTOMATION
                                  Information on System
                                  Problems and Planned
                                  Improvements


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                                 RESTRICTED --Not      to be released outside the
                                 General Accounting OfIke unless speclflcally
                                 approved by the Office of Congressional
                                 Relations.
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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,. ,”,,,,.
         _..‘_
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