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

Tue Jan 7 16:50:26 UTC 2025

Maybe AI made it up to mess with us . . .

😂😂😂

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/>

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On Tue, Jan 7, 2025 at 8:47 AM Pamela Chestek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Is it me, or does the whole thing not make sense? The current rule
> <https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-b4d5f73a-8360-499f-ab67-97240ad8800c.html>
> is titled "Reinstatement of applications and registrations abandoned,
> cancelled, or expired due to Office error." Section (a) is request for
> reinstatement of an abandoned application where there is an Office error,
> section (b) is request for reinstatement of cancelled or expired
> registration due to Office error, and (c) is request for reinstatement may
> be construed as a petition. And there is no (c)(i).
>
> Section 2.63
> <https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-ad80a6fe-ef1d-41bf-b515-5db1487bcc95.html>
> is titled "Action after response" (not Final Action"), but it still doesn't
> make much sense because it eliminates relevant information formerly in the
> revised sections, as well as b(3) and b(4).
>
> There is no CFR section titled "Final action." The TMEP has section 714
> <https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-700d1e1814.html>
> titled "Final Action," which refers to CFR section 2.63(b), not 2.64. And
> the TMEP doesn't use that numbering format.
>
> This rule is not listed under the "Proposed Rules" on the PTO Law &
> Regulations <https://www.uspto.gov/trademarks/laws> website.
>
> I'm leaning towards the fact this is an errant publication.
>
> Pam
>
> Pamela S. Chestek
> Chestek Legal
> PLEASE NOTE OUR NEW MAILING ADDRESS
> 4641 Post St.
> Unit 4316
> El Dorado Hills, CA 95762
> +1 919-800-8033
> pamela at chesteklegal.com
> www.chesteklegal.com
>
> On 1/6/2025 9:18 PM, Lara Pearson via E-trademarks wrote:
>
> Here is the actual proposed text of the Proposed Amended Rule:
>
>  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 § 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.
>
>
>
>
> 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/>. *
>
>
>
>
> On Mon, Jan 6, 2025 at 9:02 PM Alex Butterman <abutterman at dbllawyers.com>
> wrote:
>
>> I think that proposed rule skips a step because the period from final OA
>> to appeal is only 6 months if the applicant files an extension request
>> *BEFORE* filing the Request for Reconsideration. Is the rule saying that
>> the filing of a RFR by 3 months automatically extends the appeal deadline
>> to six months? And with or without payment of the $125 fee?
>>
>>
>>
>> That rule does sound like the PTO making the applicant pay for the PTO’s
>> inability to process a RFR and Notice of Appeal simultaneously rather than
>> just fix internally whatever is screwing up that process. Maybe the PTO
>> should alter is examiner jurisdiction rules.
>>
>>
>>
>> *Alex Butterman*
>>
>> Partner
>>
>> *DUNLAP BENNETT & LUDWIG <https://www.dbllawyers.com/>*
>>
>> *211 Church St., SE; Leesburg, VA 20175*
>>
>> T: 703-777-7319 – *BIO*
>> <https://www.dbllawyers.com/attorney/alex-butterman/>
>>
>> [image: A blue and white logo Description automatically generated]
>>
>> <https://www.dbllawyers.com/empowering-innovators/>
>>
>> This electronic message contains information from Dunlap Bennett & Ludwig
>> PLLC and may be confidential or privileged. If you are not the intended
>> recipient, any disclosure, copying, or use of the contents is prohibited.
>> If you have received this e-mail in error, please notify us and delete the
>> message without copying or disclosing it.
>>
>>
>>
>> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
>> Behalf Of *Lara Pearson via E-trademarks
>> *Sent:* Monday, January 6, 2025 10:57 PM
>> *To:* Carl Oppedahl <e-trademarks at oppedahl-lists.com>
>> *Cc:* Lara Pearson <lara at brandgeek.net>
>> *Subject:* [EXT] [E-trademarks] Proposed shortening of Request for
>> Reconsideration to Final Appeal
>>
>>
>>
>> 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/>. *
>>
>>
>
> --
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>
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