PTO Proposes Shortened Time Period for Filing Reconsideration Requests

In a Notice published on February 14, 2007, the USPTO proposes to amend Rule 2.64 of the Trademark Rules "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." [Hold it! See update here. Negative comments have led the PTO to reconsider this proposed change.]


The PTO states that this new rule "may eliminate the need for some appeals or petitions, and reduces the need for remands and transfers of applications on appeal."

The revised sections of Rule 2.64 would read as follows:

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 Section 1(b) of the Act files an amendment to allege use under Section 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.

Written comments on the proposed rule change must be received by the USPTO by April 16, 2007.

TTABlog comment: This proposed change would give the practitioner another date to docket, and would require him or her to assess the chances of appellate success (and essentially prepare the appellate brief) a bit earlier. It would save the TTAB some time and effort to the extent that the request for reconsideration is granted and the underlying refusal withdrawn, and it would then save that applicant the $100 appeal fee. Otherwise, the impact of the change would appear to be minimal.

Text Copyright John L. Welch 2007.