[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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