Public Comments on Proposed Rule Change for Request for Reconsideration: International Trademark Association (INTA)
855 Third Avenue, 10th Floor
New York, NY 10017-5617
Sent: April 16, 2007
To: Commissioner for Trademarks
Subject: Changes in the Requirements for Filing Requests For Reconsideration of Final Office Actions in Trademark Cases
The USPTO Subcommittee is responding on behalf of the International Trademark Association ("INTA") to the United States Patent and Trademark Office's (USPTO) February 14, 2007 notice of proposed rule with regard to Changes in the Requirements for Filing Requests for reconsideration of Final Office Actions in Trademark Cases.
The USPTO proposes to require that the time period for filing a request for reconsideration of an examining attorney's formal refusal or requirement be cut in half from six months to three months, and that all such requests must be filed online via TEAS. The reason given for the proposed rule is to streamline and promote efficiency in the process once a final action has issued in an application for registration. The USPTO believes that the proposed rule will facilitate the likely disposition of an applicant's request for reconsideration prior to the six month deadline for filing an appeal or a petition to the Director, thereby eliminating the need for some appeals or petitions and reducing the need for remands and transfers of applications on appeal.
INTA's USPTO Subcommittee appreciates the Office's continued efforts to expedite and increase efficiencies in the processing of applications. However, we are concerned that the proposal will significantly and negatively impact trademark applicants, and not realize the more streamlined and efficient processing that the Office hopes to bring about through its enactment. Therefore, the Subcommittee asks that the Office delay or modify implementation of the proposed rule during which time an assessment is undertaken in order to quantify its likely impact on both the registration process and applicants. Our recommendation ion and comments are provided below.
Rather than implementing a mandatory requirement, the Subcommittee believes that it would be more fruitful to first conduct a pilot program in which the filing of a Request for Reconsideration during the first three months of the response period would be permissive. As part of the pilot program, if an applicant filed its request for reconsideration within the first three months of the issuance of the Final Refusal, the Examining Attorneys should be required to issue a decision on the Request within a time certain, and in no case later than one month prior to the end of the six month time period. This would ensure that sufficient time remains for satisfactory disposition of the outstanding objections while preserving the applicant's time for appeal, if the Examining Attorney denies the Request for Reconsideration. The Subcommittee believes that the assurance of a timely response by the Examining Attorney should provide an incentive for applicants to respond early, and is just as likely as is the current proposal to eliminate unnecessary appeals. We believe that this proposal would achieve the same objectives as the Office's proposal, while avoiding an overly burdensome impact upon applicants. The pilot program would also provide an opportunity to collect data by which to determine if the shorter period for filing Requests for Reconsideration results in the anticipated efficiencies.
In addition to its primary concern with the proposal, as stated above, the Subcommittee has the following comments regarding the proposal.
First, there is an ambiguity in the proposal and associated governing rules with regard to the definition of the term "request for reconsideration," as well as how it will be determined what constitutes a request for reconsideration TMEP Section 715.03 states "[T]he examining attorney should construe any paper filed after final action that contains new amendments, new evidence, or new arguments as a request for reconsideration, and should issue a written action granting or denying the request." In contrast, on page 6985, the notice of the proposed rule distinguishes between requests for amendment and requests for reconsideration when it states "[T]he proposed rule still affords applicants the opportunity to submit amendments for the full six-month period from the date of the final action..." Thus, the Subcommittee suggests that the Office clarify: what constitutes a Request for Reconsideration governed by the proposed rule; how it will determine what response constitutes an amendment for which no time limit would be imposed; and what constitutes a Request for Reconsideration that would be governed by the proposed time limit.
Given the ambiguity of the proposed rule, the Subcommittee anticipates certain complications in defining a request for reconsideration. The following examples illustrate differences in determining whether the proposed rule would apply to: 1) amendments to the identification of goods and services where the applicant includes terms other than those suggested by the Examiner; 2) complex issues involving the identification of goods and services which require more than one round of revisions; 3) amendments to the description of goods and services entered in an effort to overcome a Section 2(d) refusal; 4) amendments in the nature of a disclaimer entered in an effort to avoid a Section 2(e)(l) refusal; 5) in the case of ITU applications, the simultaneous filing of an Amendment to Allege Use and an amendment to the Supplemental Register; and/or 6) the submission of evidence to supplement the record for appeal after a timely filed request for reconsideration bas been denied. In each of the above examples, it is unclear under the proposed rule change whether the filing would be permissible during the last three months of the period in which to file an appeal. It would be equally unfair if such actions were not permitted.
The Subcommittee also notes that the proposed rule at page 6985 eliminates from the present Rule 2.44, the wording "normally the examiner will reply to a request for reconsideration before the end of the six-month period if the request is filed within three months after the date of the final action" (emphasis added). The elimination of this non-binding expectation ion may have little effect, if any, on the action taken by an Examining Attorney. However, it appears to relieve the Examining Attorney of any time constraints or requirements far responsiveness. Although applicants would he required to file their Requests for Reconsideration within three months after the date of the final action, under the proposed language, Examining Attorneys have no concomitant deadline for acting on the Request for Reconsideration. While the notice on page 6985 indicates that the Office "anticipates that an examining attorney will continue to act promptly on such requests.." there is no such requirement that they do so. The absence of a mutual requirement regarding timeliness appears to place an unfair burden on applicants. Furthermore, the absence of time constraints on the Examining Attorneys will eliminate any possible advantage in efficiencies that might be brought about by a truncated reconsideration period, if the Examining Attorneys are not required to, and in fact, do not act on Request for Reconsideration in sufficient time to ensue certainty as to whether or not the objections are maintained, the proposal is unlikely to reduce the number of notices of appeal that must be filed.
Finally, there is an inherent degree of delay in the process that must be recognized and provided for in the rules, especially when it concerns complicated issues of fact. It may not be uncommon that three months may pass after receipt of the Final Refusal, before which a full analysis of the action and research of available evidence might be performed and communicated to or understood by an applicant, and a determination can be made as to whether a request for reconsideration is indicated to supplement the record on appeal. The time delays are multiplied when the applicant is a foreign entity with an instructing representative abroad. It is quite possible that the proposed the limitations will increase the number of appeals because the opportunity for resolving outstanding issues through a Request for Reconsideration will be eliminated.
The Subcommittee believes that the proposed rule imposes a serious disadvantage on applicants. At a minimum, a pilot program should be conducted during which time the proposal is permissive, and in which the Office can collect data to ensure that the perceived objectives can be realized. The proposed rules change is ambiguous in certain respects, and requires clarification. Finally, any time limitation placed on applicants in fm Requests for Reconsideration should include a reciprocal obligation on the part of Examining Attorneys to timely respond to the applicant's filing. F view of these issues, the Subcommittee believes that the current proposed rule change will not adequately address the stated goals of the Office and would impose an unfair, burden on applicants that is not offset by a more compelling benefit to the USPTO. The Subcommittee believes that the interests of both the Office and trademark applicants would be better served if the proposal and/or the Subcommittee's suggested pilot program were given additional review and consideration.
The Subcommittee further requests that the Office make available for review any statistics or other data upon which the USPTO has relied in its consideration of the proposed rule change. The Subcommittee appreciates the opportunity to submit its comments on the proposed rule change with regard to the filing of requests for reconsideration, and we look forward to participating in any further outreach undertaken by the USPTO. Should the Office have any questions or comments concerning the Subcommittee's response, please contact INTA's Director, External Relations, Bruce J. MacPherson, at 2 22-642- 1742 or firstname.lastname@example.org.