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Public Comments on Proposed Rule Change for Request for Reconsideration: Travis Bachman, Carlson Companies, Inc.

From:  Bachman, Travis
Carlson Companies, Inc.
701 Carlson Parkway
MS 8249
Minnetonka, Minnesota 55305
Sent:  Wed 3/21/2007 2:53 PM
To:  TM RECON COMMENTS
Subject:  Comments re: Proposed Rule Changes in the Requirements for Filing Requests for Reconsideration of Final Office Actions in Trademark Cases

Dear Sirs:

I respectfully disagree with the proposed rule change to require that requests for reconsideration be filed within three months after the mailing of a final refusal and that such requests for reconsideration be filed only through TEAS.

First, shortening the deadline for filing a request for reconsidera tion is ill-conceived because the types of issues that typically warrant a final refusal are significant, substantive issues such as likelihood of confusion or descriptiveness.  Often, in an effort to avoid unnecessary expense, practitioners do not put forth all available arguments and evidence regarding these types of issues in response to a first office action.  Practitioners put forth a strong case in response to the first office action, but they do not necessarily use "every arrow in the quiver."  They present the arguments and evidence which they believe are sufficient to overcome the refusal, but if the examining attorney disagrees and maintains the refusal, then they will conduct more exhaustive research and prepare the best and most complete response possible so that the examining attorney will have a complete record upon which to reconsider the issue and decide whether to maintain or withdraw the refusal.  Many times, upon reviewing the full record, an examining attorney will withdraw the refusal thus obviating the need for an appeal or making the appeal moot.  Shortening the length of time for applicants and practitioners to prepare the request for reconsideration will lead to one of two outcomes, either: (1) applicants will be forced to choose between requesting reconsideration based upon a less complete record or abandoning their applications; or (2) practitioners, anticipating the time constraints for responding to a final refusal, will be forced to submit responses to first office actions that present arguments and evidence way beyond those typically required to overcome that type of refusal.  In either case, the applicants (the PTO's customers) are hurt by this proposed rule change because: (1) they may not receive the federal trademark protection they might otherwise deserve; or (2) they will be forced to pay practitioners more for presenting exhaustive arguments and evidence in response to a first office action when that level of response is often unnecessary.

Second, requiring that all requests for reconsideration be filed through TEAS is also ill-conceived.  As mentioned above, the types of issues that typically warrant a final refusal are significant, substantive issues such as likelihood of confusion or descriptiveness.  Making a full and complete response to these issues after a final refusal often involves large amounts of evidence.  Although sophisticated practitioners have the resources to scan all of this evidence into .PDF files not exceeding 3MB each and filing electronically, less-sophisticated practitioners and applicants may not.  More importantly, unless the PTO is going to amend the rules to require electronic filing through TEAS for all application documents, thus refusing to accept applications on paper, the proposed rule creates a new hidden and unfair penalty on paper-filers who are already paying a premium for filing applications on paper.  With the proposed rule change, such paper-filers would be denied the ability to request reconsideration of a final refusal on paper--an ability that they are already paying for through a higher initial filing fee.  Instead, they would be forced (under time pressure due to the shortened three-month response window) to find some way to file their requests for reconsideration electronically or abandon their applications altogether.  Again, this is despite the fact that they have already paid a premium to file on paper and may not be able to file electronically due to internet access issues.  Unless the PTO is willing to take the politically insensitive step of requiring that all filings be made electronically, then the PTO should not require that requests for reconsideration or other post-application documents be filed only through TEAS.  To do so creates a hidden and unfair penalty on those who file on paper by choice or by necessity due to internet access problems.

Third, the timing issues that the PTO seeks to address with the proposed rule change would be more appropriately addressed, not by shortening the deadline for filing a request for reconsideration, but by changing the deadline for filing an appeal.  It is respectfully submitted that, if any change is made to the rules regarding the deadlines for requests for reconsideration and notices of appeal, the PTO should consider keeping the six month deadline for all office action responses and requests for reconsideration, but make the TTAB appeal deadline nine months from the final office action mailing date.  This change would have the same positive effects as the proposed rule, but without all of the negative effects on applicants -- the PTO's customers.

Respectfully submitted,

Travis Bachman | Associate General Counsel - Intellectual Property | Carlson Companies, Inc.
701 Carlson Parkway | MS 8249 | Minnetonka, Minnesota 55305 | USA

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Last Modified: 11/4/2010 11:10:48 AM