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Public Comments on Proposed Rule Change for Request for Reconsideration: Kathleen Cooney-Porter

From:  Kathleen Cooney-Porter
1940 Duke Street
Alexandria, Virginia 22314
Sent:  April 16, 2007
To:  Office of the Deputy Commissioner
for Trademark Examination Policy
Attn: Cynthia C. Lynch
Subject:  USPTO Proposed Rule Change to Amend 37 CFR 2.64 Concerning Requests for Reconsideration after Final Action

Dear Ms. Lynch:

The undersigned hereby submits their comments with respect to the proposed amendment of 37 CFR 2.64.

In summary, the USPTO proposes to amend 37 CFR 2.64 to require an Applicant who is filing a Request for Reconsideration of an Examining Attorney's final refusal to file the Request through the Trademark Electronic Application System (TEAS) within three months of the mailing date of the final Office Action.

For the reasons set fcrth below, the undersigned members of the law firm of Oblon, Spivak, McClelland, Maier & Neustadt strongly oppose the proposed amendment of 37 CFR 2.64.

While the private bar appreciates the Trademark Office's effort to streamline and promote efficiency in the examination process once a final action has issued, by mandating a three month response deadline to file a Request for Reconsideration does not take into account the numerous factors affecting practitioners attempting to obtain relevant information and evidence required to be filed along with the Request for Reconsideration.

Customarily, Requests for Reconsideration are filed in connection with applications involving more difficult substantive issues. The proposed mandate requiring the filing of the Requests for Reconsideration within three months after the issuance of the final refusal does not take into account practitioners who are representing Applicants in foreign countries where it is sometimes difficult to obtain such information required to respond to a final office action, for instance, translations, evidence of use, certificates of registration, etc. If an Applicant is attempting to amend an application under Section 2(f) on the basis of acquired distinctiveness, obtaining such evidence takes some time particularly in response to a continued refusal under Section 2(e)(l). Establishing sales evidence, advertising evidence, and evidence from purchasers in the file record entails time and resources from Applicants.

Further, there are instances in responding to a Section 2(d) refusal whereupon an Applicant is attempting to investigate to ascertain whether the cited reference(s) are in actual use in commerce and whether a cancellation proceeding is necessary. Usually, an Applicant must wait until the end of the six month response period to conclusively determine the status of a cited registration.

If an Applicant is attempting to secure consent to use and registration in an effort to overcome a Section 2(d) refusal, the effort and time to secure such consent is lengthy.

If Applicants are able to file Requests for Reconsideration electronically along with filing a Notice of Appeal electronically, then there is no actual paper file. Applicant's Attorney receives confirmation of a docketing of an Appeal and suspension of the Appeal while the Request for Reconsideration is pending. Thus, due to the options availabie under electronic filing, the proposed mandate for filing Requests for Reconsideration within three months of the final Office Action appears unnecessary and contradictory to the electronic filing system within the Trademark Office Examining Unit as well as the Trademark Trial and Appeal Board.

Finally, it is unclear whether the proposed rule will change or impact the Trademark Trial and Appeal Board's practice of permitting an Applicant to file a Request for Remand for good cause shown after the six month deadline and after filing a Notice of Appeal. See TBMP Section 1209.04.

Thus, based upon the above comments, the proposed amendment is overly burdensome to Applicants and practitioners attempting to overcome final refusals and conversely, an impediment to the ultimate procurement of U.S. registrations.

Accordingly, the undersigned respectfully solicits the Commissioner not to adopt the roposed rule to amend 37 CFR 2.64.

Kathleen Cooney-Porter for

United States Patent and Trademark Office
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Last Modified: 11/4/2010 11:10:48 AM