After USPTO director's surprise resignation, the trademark credentials of her successor need to be considered 07Jun 17

In a surprise move, Michelle Lee, director of the USPTO, has resigned after four years in the role. The discussion over her replacement will no doubt focus on the patent background of potential candidates. However, it is important that trademarks are not lost in the mix.

We have covered the ongoing speculation centred on the USPTO leadership in some detail. When President Trump took office in January questions were immediately asked about Lee’s future in the role. Prior to inauguration day there were rumours that she would carry on in the job but an official announcement did not follow. The office itself would not comment when asked who was occupying the hot seat, and it took a Freedom of Information Request on March 10 to obtain an answer – the USPTO confirming that Lee remained in situ.

In the time since, it has been reported that Commerce Secretary Wilbur Ross was been interviewing prospective candidates for the position, with former Johnson & Johnson IP executive Phil Johnson and former Federal Circuit Chief Judge Randall Rader both in the running. However, in terms of day to day operations the role remained Lee’s in the immediate term.

The expectation, then, was that Lee would remain in place until a new appointment was made in the political corridors of power. However, yesterday afternoon came the unexpected news that she had handed in her resignation. This has seemingly been accepted, with Ross telling Politico that the department wishes her well in her next endeavour.

Reporting just after the new broke, our sister title IAM notes that an immediate successor has not yet been named, although Commissioner for Patents Drew Hirshfeld was being touted by some DC observers as the likely choice. IAM’s Richard Lloyd notes that the aforementioned Johnson has already received security clearance for the role, having been vetted in 2014 before Lee got the nod, while another possible candidate, Irell & Manella partner Andrei Iancu, was going through the security clearance process last month. In terms of next steps, the eventual nominee would have to appear in front of the Senate Judiciary Committee before final confirmation, meaning that it could be some time before a permanent replacement is in place.

So what next? First, expect increased lobbying over her possible replacement. Much of this will come from those with skin in the patent game. In April, for example, a coalition of companies including Amazon, Facebook, Google and Samsung wrote to President Trump and Ross urging them to leave Lee in place or appoint someone who will continue the patent reform work she has begun at the agency. It is fair to expect that trademark voices will be less prominent. However, it is important that the ‘T’ in USPTO is considered when making a new appointment, even if Lee’s eventual successor comes from with patent background.

Back in 2010, when director of the agency, David Kappos told World Trademark Review that the policy focus on patents was inevitable because the trademark function was “the little engine that can and does” – ie, it was stable, working effectively and not in need of major surgery. Hence the appointment of Michelle Lee – previously deputy general counsel for Google and the company's first head of patents and patent strategy – to succeed him made a lot of sense.

However, this is not to say that trademark operations can just be left to run on while attention is directed elsewhere. Earlier this year the USPTO’s Performance and Accountability Report for fiscal year 2016 (FY2016) revealed that trademark filings rose by 5.2% last year, while the number of trademarks proceeding to registration spiked by almost 10%. The office continues to meets trademark quality and timeliness goals but, as demand rises, the strain on the 800 trademark staff will increase. At the same time, the trademark-focused team is continuing efforts to improve accuracy of the trademark register, reduce deadwood and streamline processes, while also rolling out the ‘Trademarks Next Generation’ system (TMNG). And this is before a new appointee comes in and announces new initiatives and priorities.

To that end, in January the American Intellectual Property Law Association (AIPLA) sent a letter to the then president elect to outline the qualities required of a USPTO director. It included a number of trademark focuses for an incoming director, including efforts to protect US consumers from confusion caused by “the unauthorised use of foreign marks that are ‘well-known’ in the US”, the promotion of consistency and clarity in the grant or denial of registrations and continuing efforts to strengthen the Madrid System for the international registration of marks.

The focus will naturally be on the patent credentials of the next director but it is important that trademark are not lost in the shuffle. It may still be “the engine that does” but even well-oiled engines need constant tune-ups.