United States Patent and Trademark Office OG Notices: 20 March 2007

                            DEPARTMENT OF COMMERCE
                   United States Patent and Trademark Office
                                37 CFR Part 2
                          Docket No. PTO-T-2006-0011
                                 RIN 0651-AC05

             Changes in the Requirements for Filing Requests for
          Reconsideration of Final Office Actions in Trademark Cases

AGENCY: United States Patent and Trademark Office, Commerce

ACTION: Notice of proposed rule

SUMMARY: The United States Patent and Trademark Office ("USPTO") proposes
to amend 37 C.F.R.  Sec. 2.64 to require a request for reconsideration of
an examining attorney's final refusal or requirement to be filed through
the Trademark Electronic Application System ("TEAS") within three months of
the mailing date of the final action.

DATES: Comments must be received by [60 days from the date of publication
in the Federal Register] to ensure consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to TM RECON COMMENTS@USPTO.GOV. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Cynthia C. Lynch; or by hand delivery
to the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Cynthia C. Lynch; or by electronic mail message via the Federal eRulemaking
Portal. See the Federal eRulemaking Portal Web site
(http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.

   The comments will be available for public inspection on the Office's web
site at http://www.uspto.gov. and will also be available at the Office of
the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany
Street, Alexandria, Virginia.

FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at
(571) 272-8742.

SUPPLEMENTARY INFORMATION

   The USPTO proposes the amendment of 37 C.F.R. Sec. 2.64 to streamline
and promote efficiency in the process once a final action has issued in an
application for trademark registration. By setting a three-month period in
which to file a request for reconsideration of the final action, and by
requiring that the request be filed through TEAS, the proposed amendment
would facilitate the likely disposition of an applicant's request for
reconsideration prior to the six-month deadline for filing an appeal to the
Trademark Trial and Appeal Board ("TTAB") or petition to the Director on
the same final action. This may eliminate the need for some appeals or
petitions, and reduces the need for remands and transfers of applications
on appeal.

   A request for reconsideration of a final action does not extend the time
for filing an appeal or petitioning the Director on that action. Under the
current version of the rule, wherein the applicant may file a request for
reconsideration at any time between the final action and the six-month
deadline for appealing or petitioning, many applicants simultaneously seek
reconsideration and file an appeal. Because the examining attorney loses
jurisdiction over the application upon the filing of an appeal to the TTAB,
this simultaneous pursuit of reconsideration and appeal often necessitates
a remand by the TTAB to the examining attorney for a decision on the
request for reconsideration. If the request is denied, then the case is
transferred back to the TTAB. If the request is granted, and the examining
attorney reconsiders the final action, the appeal or petition may become
moot. The need for these remands and transfers contributes to the burden on
the applicant and the USPTO, and prolongs the pendency of the case.

   In order to eliminate some appeals and petitions and reduce the need for
these remands and transfers, the proposed rule provides that a request for
reconsideration must be filed within three months of the final action,
while the six-month period for appeal or petition remains unchanged.
Normally, the examining attorney will reply to the request for
reconsideration before the end of the six-month period to appeal or
petition. To facilitate the prompt consideration by the examining attorney,
the proposed rule further provides that the request must be filed through
TEAS, which expedites the examining attorney's notice of and access to the
request.

   The proposed earlier deadline and mandatory TEAS filing facilitate the
likely disposition of the request for reconsideration prior to the deadline
to petition or appeal. A grant of reconsideration within this time frame
will obviate the need for an applicant to file an appeal or petition, thus
also saving the applicant the filing fee for an appeal or petition. A
denial of reconsideration within this time frame will obviate the need for
a case on appeal to be remanded and transferred between the TTAB and the
examining attorney. Under either scenario, the time frame in the proposed
rule promotes more efficient and prompt handling of the case, and achieves
benefits both for the applicant and the USPTO.

   References in this notice to "the Act," "the Trademark Act," or "the
statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as
amended. "TMEP" refers to the Trademark Manual of Examining Procedure, 4th
Edition, April 2005.

DISCUSSION OF SPECIFIC RULE

   The Office proposes to revise current Sec. 2.64(b). This section
concerns the time frame for and effect of filing a request for
reconsideration of a final action, as well as the treatment of amendments
accompanying such requests. The proposed revision changes the period for
filing a request for reconsideration of a final action to three months from
the date of the action. The proposed revision also introduces a requirement
that any request for reconsideration be filed through TEAS. In addition,
the proposed revision eliminates the aspirational statement in the current
rule as to when an examining attorney would "normally" act on such
requests, as unnecessary to the rule. Nonetheless, the USPTO anticipates
that an examining attorney will continue to act promptly on such requests,
and in any event, before the end of the six-month period to petition or
appeal.

   The proposed rule still affords applicants the opportunity to submit
amendments for the full six-month period from the date of the final action,
and maintains the practice under the current rule that such amendments are
entered if they comply with the applicable rules and statutory provisions.
As in the current version of the rule, the filing of such amendments does
not extend the time for filing an appeal or petitioning the Director.

   The Office proposes a technical correction to Sec. 2.64(c), for
consistency with the proposed amendment to  2.64(b), to eliminate the
reference to "the six-month response period after issuance of the final
action." The reference would be changed to "the six-month period after
issuance of the final action."

RULE MAKING REQUIREMENTS

   Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).

   Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866 (Sept. 30, 1993).

   Regulatory Flexibility Act: The Deputy General Counsel for General Law
of the United States Patent and Trademark Office has certified to the Chief
Counsel for Advocacy of the Small Business Administration that the proposed
rule changes will not have a significant impact on a substantial number of
small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The changes
proposed in this notice would not impose any additional fees on trademark
applicants. Rather, the proposed changes would facilitate the likely
disposition of the request for reconsideration prior to the deadline to
petition or appeal. A grant of reconsideration within this time frame will
obviate the need for an applicant to file an appeal or petition, thus also
saving the applicant the filing fee for an appeal or petition.

   Paperwork Reduction Act: This notice involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collection of information involved in this notice has been
reviewed and previously approved by OMB under OMB control number 0651-0050.
This notice proposes to require a request for reconsideration of an
examining attorney's final refusal or requirement to be filed through TEAS
within three months of the mailing date of the final action. The United
States Patent and Trademark Office is resubmitting an information
collection package to OMB for its review and approval because the changes
in this notice do affect the information collection requirements associated
with the information collection under OMB control number 0651-0050.

   The estimated annual reporting burden for OMB control number 0651-0050
Electronic Response to Office Action and Preliminary Amendment Forms is
117,400 responses and 19,958 burden hours. The estimated time per response
is 10 minutes. The time for reviewing instructions, gathering and
maintaining the data needed, and completing and reviewing the collection of
information is included in the estimate. The collection is approved through
April of 2009.

   Comments are invited on: (1) whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency's estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and (4)
ways to minimize the burden of the collection of information to
respondents.

   Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden, to
the Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451
(Attn: Cynthia C. Lynch), and to the Office of Information and Regulatory
Affairs, Office of Management and Budget, New Executive Office Building,
Room 10202, 725 17th Street, N.W., Washington, D.C. 20503 (Attn: Desk
Officer for the Patent and Trademark Office).

   Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.

List of Subjects

37 CFR Part 2

   Administrative practice and procedure, Trademarks.

   For the reasons stated, 37 CFR Part 2 is proposed to be amended as
follows:

PART 2 - RULES OF PRACTICE IN TRADEMARK CASES

   1. The authority citation for 37 CFR Part 2 continues to read as
follows:

      Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

   2. Amend Sec. 2.64 by revising paragraphs (b) and (c)(1) to read as
follows:

   Sec. 2.64  Final action.

      * * * * *

   (b)(1) During the three-month period after issuance of a final action,
the applicant may request that the examining attorney reconsider the final
action. The request must be filed through TEAS. The filing of a request
for reconsideration will not extend the time for filing an appeal or
petitioning the Director.

   (2) During the six-month period after issuance of a final action, the
applicant may submit amendments. Any such amendments will be examined, and
will be entered if they comply with the rules of practice in trademark
cases and the Act of 1946. The filing of such an amendment will not extend
the time for filing an appeal or petitioning the Director.

   (c)(1) If an applicant in an application under  1(b) of the Act files
an amendment to allege use under Sec. 2.76 during the six-month period
after issuance of a final action, the examiner shall examine the amendment.
The filing of such an amendment will not extend the time for filing an
appeal or petitioning the Director.

   * * * * *


                                                               JON W. DUDAS
                                            Under Secretary of Commerce for
                                  Intellectual Property and Director of the
                                  United States Patent and Trademark Office