[Federal Register Volume 72, Number 30 (Wednesday, February 14, 2007)]
[Proposed Rules]
[Pages 6984-6986]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E7-2519]


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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.

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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 [email protected]. 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]
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