Public Comments on Proposed Rule Change for Request for Reconsideration: Franklin Pierce Law Center Intellectual Property Amicus Clinic (IPAC)
Franklin Pierce Law Center Intellectual Property Amicus
Subject: COMMENTS ON THE PROPOSED AMENDMENT TO REQUEST FOR RECONSIDERATION SUBMISSION
These comments address the proposed amendment to 37 CFR 2.64 requiring requests for reconsideration following a final office action to be filed using the Trademark Electronic Application System (TEAS).
Members of the Intellectual Property Amicus Clinic at Franklin Pierce Law Center in Concord, New Hampshire, prepared these comments.
On February 14, 2007, the Federal Register published a proposed rule that would change the requirements for filing requests for reconsideration of final office actions in trademark cases.  If promulgated, the rule would amend 37 CFR 2.64(b) to require requests for reconsideration to be submitted within three months of the mailing date of the final office action and filed through the Trademark Electronic Application System (“TEAS”). The United States Patent and Trademark Office (“PTO”) proposed this rule in order to “streamline and promote efficiency in the process once a final action has issued in an application for trademark registration.”  This comment  addresses whether the electronic filing requirement will unfairly hamper attempts by an applicant to supplement existing evidence with evidence necessary to preserve a mark on appeal. 
Requests for Reconsideration
Requests for reconsideration are an integral aspect of the registration process. When an applicant seeks to register a mark, an examining attorney may respond not with a registration, but with an office action. Some of the reasons for receiving such an office action will be easily correctable by the applicant in a response, such as an examining attorney's request to clarify an indefinite identification of goods or services. However, the examining attorney could issue an office action with a much harsher basis. For example, the mark could be rejected by the examining attorney should a likelihood of confusion exists between the applicant's mark and another. If the applicant cannot adequately convince the examining attorney that the mark is registrable, then a final office action will issue following the issuance of two or more office actions.
Once a final office action issues, an applicant's choices are limited. Depending on the applicant and the investment made in the mark, the applicant may choose to appeal the examining attorney's decision to the TTAB. However, the TTAB will review the matter on an ex parte basis, and information not contained in the record will not be considered. As a result, all evidence necessary to support the use of the mark must be contained in the communication between the applicant and examining attorney.
If additional evidence is needed, the applicant can file a request for reconsideration and include all the evidence previously excluded from the examining attorney's and applicant's communication within it. By doing so, the evidence becomes part of the record and can be reviewed by the TTAB, making the request for reconsideration an important tool to be utilized by the applicant. If the ability to file a request to reconsider is burdened by the need to have access to and knowledge of the electronic filing system, many marks could be lost on appeal because of an incomplete record.
Furthermore, there is an even greater reason why this rule should not be ignored or thought of as inconsequential. By requiring requests for reconsideration to be filed only by electronic means, the PTO is moving further towards an all electronic filing requirement for trademark-related communications through TEAS. Therefore, it is important to consider the benefits and ramifications of having an all-electronic trademark system.
The Benefits and Disadvantages of an All Electronic Filing System
Many benefits exist for switching to an all TEAS system. First, TEAS provides important information regarding trademarks in a centralized location accessible throughout the world. The System is a simple, quick, and convenient way for those who are searching for confusingly similar federally registered marks, or those interested in the status of their application, or another's. The user-friendly nature of TEAS makes these tasks accomplishable and also allows those who cannot afford legal assistance the ability to file their own trademark applications. This has the effect of increasing federal registrations. Additionally, electronic filing decreases the potential for lost and misplaced filings because of the lack of massive paper volumes and the intrinsic human error large volumes include.
Conversely, switching to an all electronic filing system may have negative consequences. For example, most of the other work done by the PTO is still paper-based, so the need to maintain a working paper file of the electronic application exists. Also, the user-friendly TEAS set-up may limit the need for attorneys, or in the very least, may disrupt some business practices that still include paper filings. The amendment also requires the applicant to have access to the Internet. While the PTO has provided locations in libraries that TEAS can be accessed, this still places some burden on the applicant. Finally, some potential applicants might be uncomfortable using a computer altogether.
In light of these concerns, the PTO should change the statutory period to require requests for reconsideration to be submitted within three months of the date of the office action mailing but allow continued submission of requests by regular mail or through TEAS. Simply changing the time period from six months to three months, regardless of the nature of the filing, would affect the Office's interest in limiting the incidences of the TTAB remanding the appeal to the examining attorney for a decision on the request for reconsideration or filing an appeal with the TTAB at all.
The PTO is correct in its attempt to move along with technology rather than resist it. The TEAS system does provide greater office efficiency and more accessible customer services; however, there are several downsides to making a response to a final office action through TEAS a requirement. By maintaining the current practice of allowing both electronic and paper filling, every applicant retains an equal opportunity to file such these important documents. If this rule is put into effect, it will only be the first of many rules that will require electronic filing, a slippery slope which is to be avoided.
 Federal Register, Volume 72, No. 30.  Id.  Prepared by Franklin Pierce Law Center Intellectual Property Amicus Clinic (IPAC) member Jennifer L. Fessler, LL.M. candidate; and Mary Anne Copeland, LL.M. candidate and IPAC Graduate Fellow.