Public Comments on Proposed Rule Change for Request for Reconsideration: Fross Zelnick Lehrman & Zissu, P.C.
855 Third Avenue, 10th Floor
New York, NY 10017-5617
Sent: April 16, 2007
To: Commissioner for Trademarks
Attn: Cynthia C. Lynch
Subject: Notice of Proposed Rule and Request for Comments as to: "Changes in the Requirements for Filing Requests for Reconsideration ARer Final Office Action in Trademark Cases" (Federal Register/Vol. 72, No. 30, pp. 6984-6986)
COMMENTS ON PROPOSED RULEMAKING
These are the comments of Fross Zelnick Lehrman & Zissu, P.C., a New York based law firm that practices extensively in the field of trademark law and before the USPTO concerning the proposed new rule to limit the filing of requests for reconsideration to the initial three months after a Final action issues and which also mandates these be filed through TEAS only.
Far from resulting in a "streamlined" process, the rule changes will result in confusion, constrain applicants' options for gaining allowance seer Final Action, and will ultimately increase the TTAB ex park docket and workload. Therefore, we do not support the proposed rule as published for comment.
1) Bifurcating a full six month "response" period into two separate time frames, applied only to reconsideration requests that present no amendments, will create unnecessary confusion among applicants, especially pro-se and foreign or Madrid applicants. In addition to confusion as to what the applicant can file and when, the rule is also silent about when the applicant can expect an examining attorney to consider what is filed, Interpretation as to what is or is not an amendment will inevitably complicate the process, as when amendments (which can be filed at any time) do not address any specific requirement made by the examining attorney but affect the viability of a substantive refusal. An example of this is an amendment to narrow an otherwise acceptably definite goods identification and avoid a Section 2(d) citation. The rule changes are silent as to what discretion, if any, an examining attorney would retain to consider such an amendment and possibly withdraw the citation, and how applicants can be assured such discretion would be fairly, yet consistently, exercised over numerous applications.
2) Deleting the "aspirational statement" in the original rule relating to when reconsideration requests will be reviewed is troubling given that the stated justification for imposing a three-month rule on applicants is so that they will know whether they need to appeal before expiration of the six month appeal period, The explanation given, that internal USPTO procedures and expectations will moot this statement, begs the question of why, then, the aspirational statement is not being replaced by a corresponding requirement for the requests to be reviewed prior to the six-month appeal deadline.
3) Thee months after issuance of a final refusal is often too short of a time in which to present an effective reconsideration request, considering the time necessary to receive, review, and report the final action, obtain instructions from a client (especially where this is done through a foreign agent), and then prepare and file the request for reconsideration.
4) Moreover, the Federal Register benefits where applicants have the full six month period of time available after final to conduct investigations and weed out potentially abandoned marks. It also benefits where a consent to register is arranged with a registrant, since this often reflects marketplace realities showing confusion to be unlikely. Three months frequently is not enough time to approach a registrant, and then negotiate and finalize a consent agreement, especially if the other party is located in another country.
5) Applicants who miss the three month time in which to file a request for reconsideration (apart from an amendment) would appear to be obliged to appeal to the Board within the time remaining (or petition the Commissioner, though petitions are rare) if they wish to maintain the application. Moreover, remand to an examining attorney for reconsideration of arguments and new evidence after the initial three month period would apparently have to be done through the TTAB after the filing of a Notice of Appeal and based on a timely showing of "good cause." In this respect, the new rule changes what would have been requests for reconsideration and routine remands into ex-park proceedings before the Board, requiring the commitment of further Board and USPTO resources (note, examining attorneys require substantial non-product ion time to write and file a TTAB brief).
6) There seems little burden on the TTAB or USPTO to process on-line filings of exparte appeals and remand requests at any time during the six-month period. A Notice of Appeal can now be filed electronically with the Board, and checking the appropriate box automatically suspends the appeal pending disposition of a request for reconsideration. As the USPTO already has electronic rather than paper files, "transfer" of applications on appeal between the examiner and TTAB seem a de minimus concern. If instead of altering the time period to file for reconsideration, the PTO simply mandated on-line filing of requests for remand submitted along with an appeal, this would seem to meet all of the PTO's objectives without burdening applicants to make sure any reconsideration requests are submitted early and prior to appeal. As stated above, any time savings in USPTO pendency resulting from the rule change would merely be at the expense of the TTAB, since these would likely be offset by more ex-parte appeals and substantive motions for remand which the TTAB would have to consider on the merits.
Given the above considerations, among others, we are opposed to adoption of the proposed rule change as written. We thank the Commissioner for this opportunity to comment.