[E-trademarks] Proposed shortening of Request for Reconsideration to Final Appeal

[Lara Pearson]

Happy New Year list friends:

I hope you all had a delightful holiday break and are finding things to
look forward to this year.

I have a response to a Final OA and was researching whether there'd been a
change in the response time from 6 to 3 months, and came across this Dec
31, 2024 USPTO Notice of Proposed Rule
<https://www.uspto.gov/web/offices/com/sol/og/2024/week53/TOCCN/item-469.htm>,
which I don't recall seeing discussed here (forgive me if it was, and I
missed it):

The United States Patent and Trademark Office ("USPTO") proposes to
amend 37 C.F.R.  Sec. 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. ***

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 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.

Comments must be received by [60 days from the date of publication in
the Federal Register] to ensure consideration.

I agree with the rationale here, but I'm not sure the process is the
best to meet the stated goals, given the shortened evidentiary
timeline.

Curious what others think.

Cheers!


Lara Pearson (she/her/hers) [Why pronouns
<https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>
?] (Hear how I say my name <https://namedrop.io/larapearson>)

Law Office of Lara Pearson Ltd, PBC

Leader, Brand Geek

Lara at BrandGeek.net | Ph: 775.833.1600 | My bio <http://brandgeek.net/about/>


This e-mail may contain information that is *privileged* or *confidential*.
If you received this communication in error, please immediately notify the
sender and delete/destroy all copies of this correspondence. Thank you.


*Brand Geek practices flex-time and a 4-day work week Mon-Thurs.** If you
see us working weekends, that's our choice. We do not expect anyone
(including you!) to work/respond on the weekend. Please respond at a time
that works for you. *

*Protecting the Brands that are Changing the World**®*

*Protecting the Businesses that are Changing the World*
*®Protecting the Brands of Soulfulpreneurs**®*


*Leading the way, we belong to **1% for the Planet (since January 2006),
SVN (since Spring 2007), **Certified B Corporation (since February 2008).*




*Save the planet! Please don't print.*

*I acknowledge my privilege to live, work and play on the unceded
traditional lands of the first people of Lake Tahoe, the Washoe or Wašišiw
("people from here," pronounced Wa She Shu). With humility and gratitude, I
honor this sacred land, and the Washoe Tribe <https://washoetribe.us/>. *
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250106/2a9d7d18/attachment.html>