[Federal Register Volume 73, Number 82 (Monday, April 28, 2008)]
[Proposed Rules]
[Pages 22894-22895]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-9216]


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DEPARTMENT OF COMMERCE

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.

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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 [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 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 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 Sec. Sec.  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.

[[Page 22895]]

Discussion of Specific Rules

    The Office proposes to revise Sec.  2.64(b) and Sec.  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 
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 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.
    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 in 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.

    2. Amend Sec.  2.6 by adding paragraph (a)(22) to read as follows:


Sec.  2.6  Trademark fees.

* * * * *
    (a)
    * * *
    (22) For filing on paper a request for reconsideration of a final 
action--$50.00.
* * * * *
    3. Amend Sec.  2.64 by revising paragraph (b) to read as follows:


Sec.  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 Sec.  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.
* * * * *

    Dated: April 22, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E8-9216 Filed 4-25-08; 8:45 am]
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