Practice and procedure: Trademark cases; filing requests for reconsideration of final office actions; requirements,

[Federal Register: February 14, 2007 (Volume 72, Number 30)]

[Proposed Rules]

[Page 6984-6986]

From the Federal Register Online via GPO Access [wais.access.gpo.gov]

[DOCID:fr14fe07-23]

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 CFR 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 April 16, 2007 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 CFR 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

[[Page 6985]]

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 Sec. 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, NW., Washington, DC 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 in 37 CFR Part 2

Administrative practice and procedure, Trademarks.

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

[[Page 6986]]

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 section 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. * * * * *

   Dated: February 8, 2007. Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

   [FR Doc. E7-2519 Filed 2-13-07; 8:45 am]

   BILLING CODE 3510-16-P