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Public Comments on Proposed Rule Change for Request for Reconsideration: Joseph D. Lewis - Barnes & Thornberg LLP

From:  Joseph D. Lewis
BARNES & THORNBURG LLP
750 17th Street N.W.
Suite 900
Washington, DC 20006-4607
Sent:  April 13, 2007 To:  Commissioner for Trademarks
Attn: Cynthia C. Lynch
Subject:  Proposed Changes in the Requirements for Filing Requests for Reconsideration of Final Office Actions

Dear Madam:

I am pleased to provide comments on the proposed changes to 37 CFR 4 2.64 as published in the Federal Register on February 14,2007. The comments contained herein are my own; they do not necessarily represent the views of Barnes & Thornburg LLP or its clients.

The undersigned is a practitioner with more than two decades of experience in representing applicants in trademark applications before the U.S. Patent and Trademark Office("USPTO"). I have concluded that the proposed amendment would not be in the public interest, or that of the USPTO. Therefore, I respectfully submit that the proposed amendment should not be promulgated as a final rule.

The expressed goal of the rule is laudable, in that history has shown that a significant number of appeals of final actions are filed during the pendency of a request for reconsideration. However, the proposed rule is not likely to fully achieve the desired goal, and will introduce a new set of issues that will complicate the process for applicants and might unwittingly serve to compound the very problem that was the genesis of the proposed rule.

It should be recognized that the current rules already provide a disincentive to defer seeking reconsideration until the end of the six-month period for filing an appeal. The rules provide that the filing of a request for consideration does not toll the deadline for fling an appeal. Thus, if an applicant waits until close to the deadline for filing an appeal, it is unlikely that the Examining Attorney will be able to act on the request for reconsideration in advance of the deadline. Consequently, in order to keep its application alive, such an applicant is required to pay the fee for an appeal to the Trademark Trial and Appeal Board ("TTAB"). The prospect of paying this fee already provides an incentive for filing requests for reconsideration early.

It is noted that the TTAB has implemented a streamlined procedure for dealing with the issue or appeals filed while a request for reconsideration is pending. The electronic form for Commissioner for Trademarks instituting an appeal includes an option to indicate that a request for reconsideration has been filed, or will be filed contemporaneously with the notice of appeal. Experience has shown that the processing of these requests is almost instantaneous, and automated. Applicants are promptly notified of the appeal, and the case is forwarded to the Examining Attorney within one day. Therefore, I submit that the present practice does not create an undue burden on the USPTO.

It is further noted that the proposed rule does not (and cannot) change the statutory deadline for appeal. Consequently, applicants still will have an opportunity to, in effect, defer the filing of a request for reconsideration until the time that an appeal is due. Many requests for reconsideration include the submission of additional evidence. Thus, after an appeal is filed, the applicant can (and undoubtedly will) request a remand of the application to the Examining Attorney for consideration of this new evidence. This process would have the same net effect of delaying the final resolution of an application, which the proposed rule is intended to address. Indeed, it could increase delays because those applicants who are not inclined to expedite applications would not be incentivized to file anything in the 4th through 6th months of a final refusal.

For those applicants who tend to wait until the last minute, they may well wait for the full six months before filing their appeal, and then file the new evidence. Under the present rule, such applicants have a stronger incentive to file in advance of the deadline for appeal, with the hope that the matter can be resolved with the Examining Attorney prior to the filing of an appeal.

In many cases, it is not possible to file for reconsideration within the first three months. For example, it is not uncommon to try to submit the consent of a prior registration to overcome a final refusal. The timing of the receipt of such a consent is not fully under an applicant's control. If such a consent were to be obtained in the 4th month after a final refusal, the applicant would be deprived of the opportunity to seek reconsideration, and would be forced to file an unnecessary appeal. The same would hold true if a cited mark were to be cancelled after the three-month deadline. Thus, in many situations, the proposed rule will increase the number of unnecessary appeals.

The proposed rule would require that all requests for reconsideration be filed electronically. This proposal also should not be adopted. The PTO has done an exemplary job of encouraging applicants to we electronic filing on a voluntary basis. Applicant's who choose to pay the additional fees for a paper or regular TEAS application should not be forced to file this document electronically. Since the requirement would apply only to requests for reconsideration, and not to the many other documents that must be filed, the implementation of this rule will require docketing and filing procedures that unduly increase the burden on applicants. Moreover, the likelihood of errors in the form of filing by pro se applicants and even attorneys is great, as this rule is contrary to the usual and customary procedures that will generally be applicable to filings in ex parte matters.

The proposed amendments eliminate the aspirational time goal for Examining Attorneys to act on requests for reconsideration, Unfortunately, even today that goal is not always met. The elimination of that goal is likely to increase the number of requests for reconsideration that are not disposed of by the appeal deadline, and increase the number of unnecessary appeals in direct contravention of the goal of the proposed amendments.

For the above reasons, the proposed rule should not be adopted and the present scheme should remain in effect.

Very truly yours,
/signed/
Joseph D. Lewis

United States Patent and Trademark Office
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