Public Comments on Proposed Rule Change for Request for Reconsideration: William P. Berridge, Oliff & Berridge, PLC
Oliff & Berridge, PLC
Attorneys at Law
277 South Washington Street
Alexandria, Virginia 22314
Sent: April 13, 2007
To: Commissioner for Trademarks
Attn: Cynthia C. Lynch
Subject: Comments on Proposed Rule Change Regarding Filing Requests for Reconsideration of Final Office Actions in Trademark Cases
Oliff & Berridge, PLC is a nationwide law firm specializing in intellectual property matters. Its trademark practice serves corporations and individuals from every continent and has prosecuted thousands of matters before the U.S. Patent and Trademark Office (PTO). Its practice before the PTO offers it a perspective and depth of experience necessary to provide the following comments regarding the proposed rule change.
The PTO is proposing an amendment to 37 CFR §2.64 that would reduce the amount of time afforded to file a Request for Reconsideration from six months to three months from the issuance of a final office action. The change would also mandate that the Request for Reconsideration be filed online through the Trademark Electronic Application System (TEAS). The PTO's stated goals in proposing the rule change are 1) to streamline and promote efficiency in the prosecution process after the issuance of a final action; 2) to ease the burden on applicants by obviating the need for applicants to file a Notice of Appeal in cases where Requests for Reconsideration are granted; and 3) to reduce the need for transfers and remands of cases between the Examining Attorney and the Trademark Trial and Appeal Board (TAB), thereby reducing the period of pendency of applications.
The requirement that a Request for Reconsideration be filed through TEAS would get such request in front of the Examining Attorney faster, thereby promoting efficiency and reducing the pendency of applications. As such, this portion of the proposed rule change is clearly useful to the goals set out by the PTO. The remainder of the proposed rule change appears to be contradictory to the PTO's goals.
First, limiting the amount of time to file the Request for Reconsideration to three months, with three additional months for filing amendments, formalizes and encourages piecemeal prosecution. If the PTO reduces the amount of time to submit a Request for Reconsideration to three months, applicants will be motivated to submit timely Requests for Reconsideration with only a portion of the overall substance and to file supplemental amendments in advance of the six-month deadline if the Request is unsuccessful. Such behavior would nullify the efficiency purpose of the proposed rule change, but an applicant engaged in the time-consuming process of gathering information and materials for entry into the record might have no other option. Also, filing a Request for Reconsideration separate from subsequent amendments would introduce unnecessary complexity to the process. Examining Attorneys would need to waste their resources determining whether particular arguments pertain to the Request for Reconsideration or a subsequent amendment.
With respect to the PTO's alleged goal of easing the burden of applicants by reducing the time available to them, the preparation for filing a Request for Reconsideration in an applicant's shall attempt to overcome a refusal for registration before appeal may require a significant amount of time for legal research, for negotiating, drafting and executing consent agreements, for compiling information and/or materials, and/or for various other activities that assist an applicant in overcoming a find refusal. As such, by cutting in half the amount of time an applicant has to submit the Request for Reconsideration, the proposed rule change is directly contradictory to the PTO's alleged goal and unduly burdens applicants.
An alternative to the proposed rule change that would accomplish the stated goals of the PTO without increasing the burden on either the applicants or the PTO would be to conduct this process in the same or similar fashion as it is handled on the patent side of the PTO. That is, rather than having a case transferred to the TAB upon the filing of a Notice of Appeal, the case could remain with the Examining Attorney until appeal briefing is completed. Also, the amount of time in which to file the Appeal Brief after the Notice of Appeal is filed and to file any Reply Brief and/or request an oral hearing could be standardized to eliminate any need for TAB involvement until briefing is completed. See 37 C.F.R. 41.35, 41.37, 41.41, 41.43 and 41.47. By implementing these changes, the PTO's goals can be attained without the need to increase the burden on applicants and Examining Attorney. This alternative suggestion would promote simplicity and predictability in the appeal process, as well as result in fewer petitions relating to rule compliance. At the same time, applicants would have the time required to prepare a thorough record for appeal. This would not increase the pendency of trademark applications. Moreover, Exchange Attorneys could moot an appeal after seeing applicant's appeal brief, minimizing the involvement of the TTAB in some cases.
Very truly yours,
William P. Berridge