[E-trademarks] [EXT] Proposed shortening of Request for Reconsideration to Final Appeal
Crane, Susan
susan.crane at wyndham.com
Tue Jan 7 12:33:52 EST 2025
Does look like a draft given comment deadline is in brackets, etc.
Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing
Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Pamela Chestek via E-trademarks
Sent: Tuesday, January 7, 2025 12:20 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: Re: [E-trademarks] [EXT] Proposed shortening of Request for Reconsideration to Final Appeal
That still doesn't make sense. These things are reviewed extensively, and no one caught it? It removes information that is on a different topic and still relevant, and doesn't have the title they claim it has. It's not on the PTO website as
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That still doesn't make sense. These things are reviewed extensively, and no one caught it? It removes information that is on a different topic and still relevant, and doesn't have the title they claim it has. It's not on the PTO website as a pending notice of rulemaking. I searched the Federal Register website<https://urldefense.com/v3/__https:/www.federalregister.gov/documents/search?conditions*5Bterm*5D=trademark&conditions*5Btype*5D*5B*5D=PRORULE*__;JSUlJSUlIw!!Nf401RNTQFE14GfWW3o!jBtVAa3qeR7llTvfqiIWWvK5CBOQa43fb4Lv2U92yzZy1ZKTqJ4rp7whuWFn0LeD2o7s8MfTtrpOQuXG7-ftpPGoha4IIkI$> and didn't find it. I wonder if it was a draft that somehow ended up on the website?
Perhaps the kind PTO lurkers on the list can privately message one of us whether this was an error.
Pam
Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
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On 1/7/2025 9:11 AM, Crane, Susan wrote:
I think it was just a typo and they meant to say 2.63. They are apparently renaming the section and eliminating (b)3 and (b)4.
Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing
Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Pamela Chestek via E-trademarks
Sent: Tuesday, January 7, 2025 11:48 AM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com><mailto:pamela at chesteklegal.com>
Subject: Re: [E-trademarks] [EXT] Proposed shortening of Request for Reconsideration to Final Appeal
Is it me, or does the whole thing not make sense? The current rule is titled "Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error. " Section (a) is request for reinstatement of an abandoned application
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Is it me, or does the whole thing not make sense? The current rule<https://urldefense.com/v3/__https:/tmep.uspto.gov/RDMS/TFSR/current*/current/r-b4d5f73a-8360-499f-ab67-97240ad8800c.html__;Iw!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAzNxycrA$> 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://urldefense.com/v3/__https:/tmep.uspto.gov/RDMS/TFSR/current*/current/r-ad80a6fe-ef1d-41bf-b515-5db1487bcc95.html__;Iw!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAl0Alass$> is titled "Action after response" (not Final Action"), but it still doesn't make much sense because it eliminates relevant information formerly in the revised sections, as well as b(3) and b(4).
There is no CFR section titled "Final action." The TMEP has section 714<https://urldefense.com/v3/__https:/tmep.uspto.gov/RDMS/TMEP/current*/current/TMEP-700d1e1814.html__;Iw!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAe16A1p4$> 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://urldefense.com/v3/__https:/www.uspto.gov/trademarks/laws__;!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAD_dnEzo$> website.
I'm leaning towards the fact this is an errant publication.
Pam
Pamela S. Chestek
Chestek Legal
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On 1/6/2025 9:18 PM, Lara Pearson via E-trademarks wrote:
Here is the actual proposed text of the Proposed Amended Rule:
2. Amend Sec. 2.64 by revising paragraphs (b) and (c)(1) to read as
follows:
Sec. 2.64 Final action.
* * * * *
(b)(1) During the three-month period after issuance of a final action,
the applicant may request that the examining attorney reconsider the final
action. The request must be filed through TEAS. The filing of a request
for reconsideration will not extend the time for filing an appeal or
petitioning the Director.
(2) During the six-month period after issuance of a final action, the
applicant may submit amendments. Any such amendments will be examined, and
will be entered if they comply with the rules of practice in trademark
cases and the Act of 1946. The filing of such an amendment will not extend
the time for filing an appeal or petitioning the Director.
(c)(1) If an applicant in an application under § 1(b) of the Act files
an amendment to allege use under Sec. 2.76 during the six-month period
after issuance of a final action, the examiner shall examine the amendment.
The filing of such an amendment will not extend the time for filing an
appeal or petitioning the Director.
Lara Pearson (she/her/hers) [Why pronouns<https://urldefense.com/v3/__https:/medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743__;!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAQX1xiZw$>?] (Hear how I say my name<https://urldefense.com/v3/__https:/namedrop.io/larapearson__;!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAEfeYCho$>)
Law Office of Lara Pearson Ltd, PBC
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On Mon, Jan 6, 2025 at 9:02 PM Alex Butterman <abutterman at dbllawyers.com<mailto: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 $125 fee?
That rule does sound like the PTO making the applicant pay for the PTO’s inability to process a RFR and Notice of Appeal simultaneously rather than just fix internally whatever is screwing up that process. Maybe the PTO should alter is examiner jurisdiction rules.
Alex Butterman
Partner
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Lara Pearson via E-trademarks
Sent: Monday, January 6, 2025 10:57 PM
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Lara Pearson <lara at brandgeek.net<mailto:lara at brandgeek.net>>
Subject: [EXT] [E-trademarks] Proposed shortening of Request for Reconsideration to Final Appeal
Happy New Year list friends:
I hope you all had a delightful holiday break and are finding things to look forward to this year.
I have a response to a Final OA and was researching whether there'd been a change in the response time from 6 to 3 months, and came across this Dec 31, 2024 USPTO Notice of Proposed Rule<https://urldefense.com/v3/__https:/www.uspto.gov/web/offices/com/sol/og/2024/week53/TOCCN/item-469.htm__;!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCApkpZ6rs$>, 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://urldefense.com/v3/__https:/medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743__;!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAQX1xiZw$>?] (Hear how I say my name<https://urldefense.com/v3/__https:/namedrop.io/larapearson__;!!Nf401RNTQFE14GfWW3o!gd_D4QXVw_Hn7FKsfUfr2IVqhWwJhzzupJta15YgLi5P-vLuEAVJVzwjxgi62wAEkB4F1c9E_-5Up0E5vGUl2LCAEfeYCho$>)
Law Office of Lara Pearson Ltd, PBC
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