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Policy > Comments Received > Comments on Proposed Institution of a Fee to File a Paper a Request for Reconsideration of a Final Office Action in a Trademark Case

From: R. Kunstadt, P.C. [mail@rkunstadtpc.com]
Sent: Thursday, May 29, 2008 12:24 PM
To: TM RECON COMMENTS
Subject: [Docket No. PTO-T-2006-0011] RIN 0651-AC05 Institution of a Fee
To File on Paper a Request for Reconsideration of a Final Office Action
in a Trademark Case

date:05/29/08

Our Ref. No.: 1-024 eeb

e-mail to Commissioner for Trademarks (Att. Ms. Cynthia C. Lynch)

tmreconcomments@uspto.gov

Re: [Docket No. PTO-T-2006-0011] RIN 0651-AC05 Institution of a Fee To File on Paper a Request for Reconsideration of a Final Office Action in a Trademark Case

Dear Commissioner:

This constitutes the comments of R. Kunstadt, P.C. on the captioned proposal for institution of a fee to file on paper a request for reconsideration of a final office action in a trademark case. R. Kunstadt, P.C. is an intellectual property firm located in New York, New York. We are active in filing trademarks on behalf of clients in the pharmaceutical, clothing, computer, beverage and other industries, in the United States and foreign countries. These comments represent the opinion of the firm and the undersigned, but are not presented on behalf of any clients of the firm.

SUMMARY

The proposed rules will tend to result in a de-facto mandatory electronic filing system for reconsideration requests because they penalize applicants who do not use electronic filing for that purpose, by charging them the amount of $50.

Nowadays, the Internet is not sufficiently reliable to make it the primary means of communication with the Trademark Office. The Internet is plagued by viruses and hackers. Security of transmission via the Internet cannot be assured by present technology.

The specific electronic interface used by the Trademark Office, appears to be designed for an inexperienced trademark applicant. It is not compatible with industry-standard office automation programs. Many firms (like ours) which are active on behalf of a large number of sophisticated clients, have made significant investments in state-of-the-art office automation technology. Requiring trademark correspondence to be prepared and filed by the present electronic system, would represent a technological step backward.

If mandatory filing online were to be implemented, the Trademark Office should at least exempt submissions by mail that include a floppy disc. This would serve the main purpose of having electronic filings. There is no great work involved in reading a floppy disc; and submitting a floppy disc would cost applicants only a small amount of money -- far less than $50 -- while still giving the Trademark Office the correspondence in a digital format.

If the point of the new rule is mainly to speed up examination, then express mail filing on paper serves that purpose since it is delivered in only one day. An express mail filing that includes a floppy disk should not be penalized $50.

BACKGROUND

These comments were prepared by the undersigned Robert M. Kunstadt, with the assistance of R. Kunstadt, P.C. staff. I am a graduate of Yale University and the UCLA School of Law. I studied intellectual property law under the late Professor Mel Nimmer at UCLA. I held a post-graduate research fellowship at the Max Planck Institute for Patent, Copyright and Competition Law in Munich, Germany from 1975 to 1977. In 1978, I commenced work as an associate at the New York office of the IP firm Pennie & Edmonds. I worked at Pennie & Edmonds, in the capacity of associate and subsequently partner, until 1997. In 1997, I established the present firm, R. Kunstadt, P.C., in order to leverage the benefits of new technology to provide prompt and efficient service to intellectual property clients. From 2006 to 2007, I was Editor-In-Chief of THE TRADEMARK REPORTER, the legal journal of the International Trademark Association (INTA).

DEFICIENCIES OF THE PROPOSED NEW RULE

Sophisticated users do not fill out trademark forms by typing individual words into blanks, one at a time, the way the proposed system requires one to work. Sophisticated users use powerful databases which generate a form at the push of a button. Therefore, to de facto require sophisticated users to file their correspondence by means of the current electronic filing system, would effectively put the trademark profession back by forty years. Back in the 1960s, the state of the art was to fill out a trademark form word-by-word on an IBM electric typewriter.

SECURITY ISSUES OF ONLINE COMMERCE

Furthermore, the Internet is not a reliable means for communication. It is subject to periodic outages and service interruptions, not only due to malicious hacker attacks but also due to simple technical difficulties at Internet service providers. If we were de facto required to conduct all business with the Trademark Office only by the Internet, and if our Internet service provider had an outage or other technical difficulty, we could be unable to service our clients. Since often there are critical deadlines which must be met in order to preserve our clients' trademark rights, such an unanticipated and uncontrollable technical difficulty could prejudice our clients' rights.

Therefore, if the Office does indeed wish to institute e-filing as a long-term goal, we recommend that the public Internet not be the only means of electronic access. The Office should maintain a modem bank permitting direct dial-in connection to the Office. A direct dial-in connection is more secure than the public Internet. It would permit the Office to trace the origin of malicious calls.

UNDUE PROPOSED COSTS

Pursuant to the proposed rules, electronic filings are free. There is no sound rationale for punishing the paper-filing applicant with a $50 charge.

Charging a paper-filing applicant discriminates against those who are the poorest citizens, since submission by mail is the least expensive means of submission. You do not need to have access to a computer or training in how to use one.

Using the current e-filing system without DSL is time consuming and drives up legal fees charged by the hour. The Office seems to assume that everyone has DSL, which is not accurate. Indeed, using a survey of American households, the Government Accountability Office (GAO) found that 30% of surveyed households subscribed to dial-up connections while about 41% did not access the internet from their home (source:
www.websiteoptimization.com).

If mandatory filing online were to be implemented, the Trademark Office should at least exempt submissions by mail that include a floppy disc. This would serve the main purpose of having electronic filings. There is no great work involved in reading a floppy disc; and submitting a floppy disc would cost applicants only a small amount of money -- far less than $50 -- while still giving the Trademark Office the correspondence in a digital format.

If the point of the new rule is mainly to speed up examination, then express mail filing on paper serves that purpose since it is delivered in only one day. An express mail filing that includes a floppy disk should not be penalized $50.

Respectfully submitted,

s/RMK

Robert M. Kunstadt

Managing Attorney

R. Kunstadt, P.C.

875 Sixth Avenue, Suite 1800

New York, New York 10001

Ph: 212 398-8881

Fax: 212 398-2922

Email: mail@RKunstadtPC.com

 

 

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KEY: e Biz=online business system fees=fees forms=formshelp=help laws and regs=laws/regulations definition=definition (glossary)
The Inventors Assistance Center is available to help you on patent matters. Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov . While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website.

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