| Trademark Examination |
Referenced Items (432, 433, 434, 435, 436, 437, 438, 439, 440, 441, 442) |
(435) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 2
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
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Supplemental notice of proposed rule and withdrawal of proposed
rule
SUMMARY: In response to objections raised, the United States Patent and
Trademark Office ("USPTO") withdraws its prior proposal to amend the Rules
of Practice in Trademark Cases 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. The USPTO instead proposes to require
a fee of $50 for filing a request for reconsideration on paper, whereas no
fee would be required for a request for reconsideration filed through TEAS.
The proposed fee would cover the USPTO's added costs of processing a
request for reconsideration filed on paper, rather than through TEAS.
Currently, no fee is required in connection with a request for
reconsideration, filed either on paper or through TEAS.
DATES: Comments must be received by June 27, 2008 to ensure consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to TMRECONCOMMENTS@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 withdraws its prior proposal to amend the Rules of Practice in
Trademark Cases to shorten the deadline for filing a request for
reconsideration of a final Office action and to mandate that such a request
be filed through TEAS. The USPTO received comments about practical
difficulties presented by the potentially shorter deadline, and has
determined that, at this time, the benefits that would be achieved by the
shortened deadline do not outweigh the objections expressed by some
commenters.
Regarding the proposal to mandate filing through TEAS, the Office
remains convinced that, as set forth in the previous notice, the filing of
requests for reconsideration electronically, rather than on paper, promotes
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efficiency in processing the requests and, thereby, in the prosecution of
the application. Paper-filed requests necessitate: (1) manual scanning and
uploading of the documents into the USPTO database, and (2) the creation of
paper application file wrappers in which to store the original of the
paper-filed request for those applications where all previous filings were
through TEAS. In contrast, TEAS-filed requests are automatically uploaded
into the USPTO database and require no manual scanning or creation of a
file wrapper.
Paper-filed requests also introduce processing delays in addition to
those described above. Many applicants simultaneously seek reconsideration
of a final refusal and file an appeal to the Trademark Trial and Appeal
Board ("TTAB"). 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 necessitates a remand by the TTAB to
the examining attorney for a decision on the request for reconsideration.
Where the applicant has filed the request on paper, the application is
often remanded to the examining attorney before the request has been
received and/or uploaded into the USPTO database, and so is not immediately
available for the examining attorney's review and consideration. Thus,
filing through TEAS expedites the examining attorney's notice of and access
to the request, shortens pendency, requires less manual processing, and is
more cost efficient for the USPTO.
While not disputing the efficiencies achieved by TEAS-filing, some
commenters indicated their desire to avoid filing through TEAS when the
request for reconsideration would include voluminous attachments that the
applicant must scan for submission through TEAS. As an initial matter, the
USPTO notes that by the request for reconsideration stage, an applicant has
already received at least one non-final action and, in response thereto,
has had an opportunity to submit available evidence in support of
registration. A request for reconsideration is not intended as an
opportunity for an applicant to put forth evidence that could have been
provided in response to an initial action. As such, a legitimate need to
attach voluminous evidence to a request for reconsideration should only
arise where significantly different evidence is included in the final
action, which the applicant wishes to rebut.
In addition, the USPTO notes that most filers are able to scan even
voluminous evidence, and file it electronically. Nonetheless, in an effort
to provide customer service to those who prefer to file requests for
reconsideration on paper and therefore shift to the USPTO the burden of
scanning and storing the request and all attachments, the USPTO proposes to
permit such paper-filing upon payment of a fee in the amount of $50. This
fee for paper-filing would cover the USPTO's added costs of processing a
request for reconsideration filed on paper. No fee would be required for
filing a request for reconsideration through TEAS. A TEAS Plus applicant
who files a request for reconsideration on paper would also be responsible
for the fee for the loss of TEAS Plus status pursuant to §§ 2.23(b) and
2.23(a)(1)(i).
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.
DISCUSSION OF SPECIFIC RULES
The Office proposes to revise § 2.64(b) and § 2.6(a).
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
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significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Regulatory Flexibility Act: This supplemental notice proposes requiring
a $50 fee for the filing of a request for reconsideration on paper. The
USPTO estimates that approximately 3,685 of the estimated 33,500 requests
for reconsideration filed annually will be filed on paper and will incur
the $50 fee.
A request for reconsideration is an optional, rather than a mandatory,
filing in the course of trademark prosecution. An applicant may therefore
choose not to request reconsideration after a final action, and thereby
avoid paying the $50 fee. Moreover, no fee will be required for a request
for reconsideration filed through TEAS, so even where an applicant chooses
to file a request for reconsideration, the applicant will not be required
to pay the $50 fee if the applicant
files electronically, rather than on
paper.
Therefore, the changes proposed in this notice will not have a
significant economic impact on a substantial number of small entities.
Paperwork Reduction Act: This supplemental notice of proposed rule
making 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 was submitted to
OMB for review in conjunction with the original notice of proposed rule
making. That submission was pre-approved by OMB under OMB Control Number
0651-0050 on June 25, 2007.
This supplemental notice proposes to allow applicants to file their
requests for reconsideration on paper, as well as electronically, with the
addition of a $50 fee for a paper filing.
The current estimate remains the same for 33,500 requests for
reconsideration filings per year. As a result of this supplemental notice,
the USPTO estimates that 3,685 of the 33,500 requests for reconsideration
will be filed in paper and will incur the $50 fee, for an estimated total
burden increase of $184,250 per year. The agency believes that it will take
the same amount of time to complete the request for reconsideration whether
they are filed in paper or filed electronically, and therefore does not
expect an increase in the burden hours as a result of this rule. The USPTO
plans to submit to OMB the addition of the paper filings and the associated
fee cost adjustment to the 0651-0050 collection at the final rule making
stage.
The currently approved estimated annual reporting burden for OMB Control
Number 0651-0050 Electronic Response to Office Action and Preliminary
Amendment Forms is 117,400 responses, 19,958 burden hours, and $0 in
annualized non-hour costs. 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
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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.
Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2
U.S.C. 1532, that agencies prepare an assessment of anticipated costs and
benefits before issuing any rule that may result in expenditure by State,
local, and tribal governments, in the aggregate, or by the private sector,
of $100 million or more (adjusted annually for inflation) in any given
year. This rule would have no such effect on State, local, and tribal
governments or the private sector.
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.
Amend § 2.6 by adding paragraph (a)(22) to read as follows:
§ 2.6 Trademark Fees
*****
(a) Trademark process fees.
***
(22) For filing on paper a request for reconsideration of a final
action -- $50.00.
*****
2. Amend § 2.64 by revising paragraph (b) to read as follows:
§ 2.64 Final action.
* * * * *
(b) During the period between a final action and expiration of the time
for filing an appeal, the applicant may request reconsideration of the
final action. If filed on paper, the request for reconsideration must be
accompanied by the fee required by § 2.6, or it will not be examined, and
no opportunity to correct the deficiency will be permitted. The filing of a
request for reconsideration will not extend the time for filing an appeal
or petitioning the Director, but normally the examiner will reply to a
request for reconsideration before the end of the six-month period if the
request is filed within three months after the date of the final action.
Amendments accompanying requests for reconsideration after final action
will be entered if they comply with the rules of practice in trademark
cases and the Act of 1946.
* * * * *
JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[103 TMOG 158]