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Public Comments on Proposed Rule Change for Request for Reconsideration: R. Kunstadt, P.C.

From:  R. Kunstadt, P.C.
Sent:  Sat 3/10/2007 5:43 PM
To:  TM RECON COMMENTS
Subject:  Comment on Docket No. PTO–T–2006–00000011

This refers to the Notice of Rulemaking at 72 FR 6984, on the subject of requests for reconsideration in trademark cases.

The undersigned is the Managing Attorney of R. Kunstadt, P.C., an IP law firm in NY, NY; and is also the current Editor-in-Chief of THE TRADEMARK REPORTER legal journal. These comments are submitted in an individual capacity, based on the undersigned's experience as a trademark practitioner since 1978; not on behalf of the mentioned law firm, any client, or INTA.

The proposed rule correctly identifies an administrative difficulty in dealing with reconsideration requests. However, it proposes to solve the problem by shifting burden to applicants, rather than by reforming internal Office procedures.

It is an unavoidable fact that after a final refusal, the applicant's main recourse is an appeal. In an appeal, prosecution shifts from ex parte to inter partes, with the examining attorney changing role from "judge" to "opposing counsel". Hence, if an appeal is to be resolved early on, it has to be done by "settlement negotiations" between the "parties" (the applicant and the examining attorney). To resolve such appeals, negotiations need to be fostered, not hindered. Else, there will be unnecessary prosecution of appeals that will burden the TTAB.

Hence, applicants should be encouraged to seek reconsideration from the examining attorney at any possible time and in any reasonable way -- not just within three months of the final office action. Examining attorneys should be encouraged to cooperate, to reduce the burden on the TTAB.

The problem of "ownership" of the case file as identified by the rulemaking is an internal jurisdictional issue between the examining corps and the TTAB. Which body has such jurisdiction at any given time, is not really a concern of the applicant, who just wants his or her case resolved.

While the applicant sometimes may be in position to offer an amendment early on (which is certainly in applicant's self-interest), that is not always the case. Not infrequently, an applicant comes to "see reason" when faced with the cost and expense of actually having to file an appeal; or, a possible resolution only becomes apparent to applicant's counsel after some work has been done to start preparing an appeal.

To solve the identified problem, the PTO should formulate more flexible internal rules governing this phase of prosecution. That would eliminate the "file passing back and forth" inefficiency identified in the rulemaking, without any new impositions on applicants.

For example, just as in a court litigation, the applicant and the examining attorney could confer and jointly request a stipulated amendment be entered by the TTAB to resolve the appeal. Such conferences might even be made a formal part of TTAB procedure, like the settlement conferences often arranged by circuit courts of appeal in civil litigation. That would remove the need to return the case file to the examining attorney to enter an amendment. Other ways could no doubt be devised to handle the internal jurisdictional issue administratively without imposing any new shortened 3-month deadlines, e-filing requirements, or the like on trademark applicants.

Respectfully submitted,
Robert M. Kunstadt

United States Patent and Trademark Office
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Last Modified: 11/4/2010 11:10:52 AM