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Chapter 1700
Petitions, Requests for Reinstatement, and Other Matters Submitted to Director
1701 Statutory Authority of Director
1702 Petitions to the Director Under 37 C.F.R. §2.146 - In General
1703 Specific Types of Petitions
1705.03 Evidence and Proof of Facts
1705.06 Stay or Suspension of Pending Matters
1705.08 Request for Reconsideration of Denial of Petition
1705.09 Appeal to Federal Court
1706 Standard of Review on Petition
1707 Director’s Supervisory Authority Under 37 C.F.R. §2.146(a)(3)
1709 Matters Delegated by Director
1710.01 Basis for Granting or Denying Petition
1711 Review of Denial of Filing Dates
1712 Reinstatement of Applications and Registrations
1712.01 Reinstatement of Applications Abandoned Due to Office Error
1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error
1713 Petition to Reverse Holding of Abandonment for Failure to Respond Completely
1714 Petition to Revive Abandoned Application
1714.01 Procedural Requirements for Filing Petition to Revive
1714.01(a) Failure to Timely Respond to an Examining Attorney’s Office Action
1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received
1714.01(c) Notice of Allowance Not Received
1714.01(d) Timeliness and Diligence
1714.01(e) Signed Statement That Delay Was Unintentional
1714.01(f) Applicability of Unintentional Delay Standard
1714.01(f)(i) Situations Where the Unintentional Delay Standard Applies
1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does Not Apply
1714.01(g) Request for Reconsideration of Denial of Petition to Revive
1715 Letters of Protest in Pending Applications
1715.01 Appropriate Subjects to be Raised in Letter of Protest
1715.01(a) Issues Appropriate as Subject of Letter of Protest
1715.01(b) Issues Inappropriate as Subject of Letter of Protest
1715.02 Letters of Protest Filed Before Publication
1715.03 Letters of Protest Filed After Publication
1715.03(a) Timely Filing of Letter of Protest
1715.03(b) Letter of Protest Does Not Stay or Extend Opposition Period
1715.04 Tracking of Letters of Protest by the Protestor
1715.05 Approval of Applications for Publication or Issue After Grant of a Letter of Protest
1715.06 Recourse After Denial of Letter of Protest
1715.07 Requests for Copies of Letters of Protest
The United States Patent and Trademark Office (“USPTO”) is led by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“Director”). The Commissioner for Trademarks oversees the staff and operations of the USPTO with regard to trademark matters. 35 U.S.C. §3(b)(2). See TMEP §1709 regarding delegation of duties by the Director.
The Patent and Trademark Office Efficiency Act, Subtitle G of the American Inventors Protection Act of 1999, Pub. L. 106-113, 113 Stat. 1501A-572, amended Title 35 of the United States Code to reorganize the USPTO as a performance-based organization within the Department of Commerce. See Reestablishment of the Patent and Trademark Office as the United States Patent and Trademark Office, 1234 TMOG 41 (May 9, 2000). Section 4732(b)(1)(B) of the Patent and Trademark Office Efficiency Act, 113 Stat. 1501A-583, amended the Trademark Act of 1946, 15 U.S.C. 1051 et seq. (except for §17) to strike “Commissioner” in each place that it appears and substitute “Director.” Section 4741(b) of the Patent and Trademark Office Efficiency Act, 113 Stat. 1501A-586, provides that:
Any reference in any other Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Patent and Trademark Office-
(1) to the Commissioner of Patents and Trademarks is deemed to refer to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office; [and]
* * *
(3) to the Assistant Commissioner for Trademarks is deemed to refer to the Commissioner for Trademarks.
Under 15 U.S.C. §1123 and 35 U.S.C. §2(b)(2), the Director may establish regulations for the conduct of proceedings in the USPTO.
37 C.F.R. §2.146 Petitions to the Director.
(a) Petition may be taken to the Director: (1) From any repeated or final formal requirement of the examiner in the ex parte prosecution of an application if permitted by §2.63(b); (2) in any case for which the Act of 1946, or Title 35 of the United States Code, or this Part of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined directly or reviewed by the Director; (3) to invoke the supervisory authority of the Director in appropriate circumstances; (4) in any case not specifically defined and provided for by this Part of Title 37 of the Code of Federal Regulations; (5) in an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.
(b) Questions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Director.
(c) Every petition to the Director shall include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief that is requested, and the fee required by §2.6. Any brief in support of the petition shall be embodied in or accompany the petition. When facts are to be proved in ex parte cases, proof in the form of affidavits or declarations in accordance with §2.20, and any exhibits, shall accompany the petition.
(d) A petition must be filed within two months of the mailing date of the action from which relief is requested, unless a different deadline is specified elsewhere in this chapter.
(e)(1) A petition from the grant or denial of a request for an extension of time to file a notice of opposition shall be filed within fifteen days from the date of mailing of the grant or denial of the request. A petition from the grant of a request shall be served on the attorney or other authorized representative of the potential opposer, if any, or on the potential opposer. A petition from the denial of a request shall be served on the attorney or other authorized representative of the applicant, if any, or on the applicant. Proof of service of the petition shall be made as provided by §2.119(a). The potential opposer or the applicant, as the case may be, may file a response within fifteen days from the date of service of the petition and shall serve a copy of the response on the petitioner, with proof of service as provided by §2.119(a). No further paper relating to the petition shall be filed.
(2) A petition from an interlocutory order of the Trademark Trial and Appeal Board shall be filed within thirty days after the date of mailing of the order from which relief is requested. Any brief in response to the petition shall be filed, with any supporting exhibits, within fifteen days from the date of service of the petition. Petitions and responses to petitions, and any papers accompanying a petition or response, under this subsection shall be served on every adverse party pursuant to §2.119(a).
(f) An oral hearing will not be held on a petition except when considered necessary by the Director.
(g) The mere filing of a petition to the Director will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board nor stay the period for replying to an Office action in an application except when a stay is specifically requested and is granted or when §§2.63(b) and 2.65 are applicable to an ex parte application.
(h) Authority to act on petitions, or on any petition, may be delegated by the Director.
(i) Where a petitioner seeks to reactivate an application or registration that was abandoned, cancelled or expired because papers were lost or mishandled, the Director may deny the petition if the petitioner was not diligent in checking the status of the application or registration. To be considered diligent, a petitioner must:
(1) During the pendency of an application, check the status of the application every six months between the filing date of the application and issuance of a registration;
(2) After registration, check the status of the registration every six months from the filing of an affidavit of use or excusable nonuse under section 8 or 71 of the Act, or a renewal application under section 9 of the Act, until the petitioner receives notice that the affidavit or renewal application has been accepted; and
(3) If the status check reveals that the Office has not received a document filed by the petitioner, or that the Office has issued an action or notice that the petitioner has not received, the petitioner must promptly request corrective action.
(j) If the Director denies a petition, the petitioner may request reconsideration, if the petitioner:
(1) Files the request within two months of the mailing date of the decision denying the petition; and
(2) Pays a second petition fee under §2.6.
Applicants, registrants, and parties to inter partes proceedings before the Trademark Trial and Appeal Board who believe they have been injured by certain adverse actions of the USPTO, or who believe that they cannot comply with the requirements of the Trademark Rules of Practice (37 C.F.R. Part 2) because of an extraordinary situation, may seek equitable relief by filing a petition under 37 C.F.R. §2.146.
Under 37 C.F.R. §2.146(a)(1), an applicant may file a petition to review an examining attorney’s formal requirement if permitted by 37 C.F.R. §2.63(b). Under 37 C.F.R. §2.63(b)(1), a petition from a requirement that is repeated but not made final is permitted if the subject matter of the requirement is appropriate for petition. Under 37 C.F.R. §2.63(b)(2), a petition from a final requirement is permitted only if the final action is limited to subject matter appropriate for petition. See TMEP §1704 regarding petitionable subject matter. If a petition under 37 C.F.R. §2.146(a)(1) is denied, the applicant has six months from the date of the Office action that repeated the requirement or made it final, or thirty days from the date of the decision on the petition, whichever is later, to comply with the requirement. 37 C.F.R. §2.63(a).
Under 37 C.F.R. §2.146(a)(2), a petition may be filed in any case for which the Trademark Act, Trademark Rules of Practice, or Title 35 of the United States Code specifies that the matter is to be determined directly or reviewed by the Director. This includes petitions to review the actions of Post Registration examiners under 15 U.S.C. §§1057, 1058, 1059 and 1141k.
Under 35 U.S.C. §2 and 37 C.F.R. §2.146(a)(3), the Director may invoke supervisory authority in appropriate circumstances. See TMEP §1707.
Under 37 C.F.R. §2.146(a)(5), a party may petition the Director to suspend or waive any requirement of the rules that is not a requirement of the statute, in an extraordinary situation, where justice requires and no other party is injured thereby. See TMEP §1708.
See TMEP §1703 for a list of issues that often arise on petition, and TMEP §§1705 et seq. regarding petition procedure.
There are a variety of issues that may be reviewed on petition. The following is a list of issues that commonly arise:
Petitions to Restore an Application Filing Date. See TMEP §1711.
Petitions to Make Special. See TMEP §1710.
Petitions to Reverse an Examining Attorney’s Holding of Abandonment for failure to file a complete response to an Office action are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1713.
Petitions to Revive Applications Abandoned Due to Unintentional Delay in Responding to an Office Action or Notice of Allowance are considered under 37 C.F.R. §2.66. See TMEP §§1714 et seq.
Petitions to Restore Jurisdiction to the Examining Attorney may be filed by the applicant under 37 C.F.R. §2.84, when the examining attorney does not have jurisdiction to review one of the applicant’s amendments.
Petitions to Review the Action of an Examining Attorney. A petition to review an examining attorney’s formal requirement may be filed under 37 C.F.R. §§2.63(b) and 2.146(a)(1), if the requirement is repeated or made final and the subject matter is appropriate for petition. See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review.
Petitions to Review the Action of the Post Registration Examiner may be filed if an affidavit of use or excusable nonuse is refused under 15 U.S.C. §1058 or §1141k, a renewal application is refused under 15 U.S.C. §1059, or a proposed amendment or correction is refused under 15 U.S.C. §1057. See 37 C.F.R. §§2.165, 2.176 and 2.186; TMEP §§1604.18 and 1606.14.
Petitions to Review the Refusal of the Madrid Processing Unit to Certify an Application for International Registration are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1902.03(a).
Petitions to Reverse a Non-Final Decision of the Trademark Trial and Appeal Board (37 C.F.R. §2.146(e)(2)) are reviewed under the standard of clear error or abuse of discretion, if the subject matter is appropriate for consideration on petition. Riko Enterprises, Inc. v. Lindsley, 198 USPQ 480 (Comm’r Pats. 1977). See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §§901.02(a) and 905.
Petitions to Review a Decision to Deny or Grant a Request for an Extension of Time to Oppose (37 C.F.R. §2.146(e)(1)) are reviewed to determine whether the Board correctly applied 37 C.F.R. §§2.101 and 2.102.
Petitions to Add or Substitute a Basis After Publication are reviewed under 37 C.F.R. §2.146(a)(2). See 37 C.F.R. §2.35(b)(3); TMEP §806.03(j).
See TMEP §1607 and TBMP §§303, 307, 308, and 309 regarding petitions to cancel registrations under 15 U.S.C. §1064, which are handled by the Trademark Trial and Appeal Board.
Ex Parte Examination
Under 37 C.F.R. §2.63(b), an applicant may petition the Director to review an examining attorney’s repeated or final requirement if the subject matter of the requirement is appropriate for petition. Under 37 C.F.R. §2.146(b), “[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions....”
Procedural issues reviewable on petition include: whether a disclaimer was properly printed in standardized format; whether an examining attorney acted properly in suspending an application; whether an examining attorney acted properly in holding an application abandoned for failure to file a complete response to an Office action (see TMEP §1713); and whether it was premature for an examining attorney to issue a final action.
Substantive issues that arise in ex parte examination are not proper subject matter for petition, and may be reviewed only by the Trademark Trial and Appeal Board on appeal. See TMEP §§1501 et seq. regarding appeal procedure. For example, an examining attorney’s requirement for a special form drawing that agrees with the mark shown on the specimens of record may not be reviewed on petition, because it requires an analysis of the commercial impression of the mark. In re Hart, 199 USPQ 585 (Comm’r Pats. 1978). An examining attorney’s requirement for a disclaimer of a feature of a mark is also improper subject matter for petition. Ex parte Florida Citrus Canners Cooperative, 37 USPQ 463 (Comm’r Pats. 1938); Ex parte Kleen-O-Dent Laboratories, Inc., 37 USPQ 232 (Comm’r Pats. 1938). The question of whether an amendment to a drawing is a material alteration of the mark is not petitionable, but the question of whether USPTO practice permits an applicant to correct an allegedly obvious typographical error on a drawing was found to be reviewable on petition. In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm’r Pats. 1990). The determination of what is appealable and what is petitionable is made on a case by case basis.
Some issues that arise in ex parte examination may be reviewed by either petition or appeal. For example, the question of who is a proper signatory of a statement of use or other verification of facts on behalf of an applicant may be reviewed either by petition or appeal. In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007).
A requirement for amendment of an identification of goods may also be reviewed either by petition or appeal. In re Stenographic Machines, Inc., 199 USPQ 313 (Comm’r Pats. 1978). On the other hand, a requirement for amendment of the classification is a procedural matter that can only be reviewed on petition. In re Tee-Pak, Inc., 164 USPQ 88 (TTAB 1969).
If an applicant files a petition from an examining attorney’s formal requirement, the applicant may not subsequently appeal the requirement to the Trademark Trial and Appeal Board. 15 U.S.C. §1070; 37 C.F.R. §2.63(b).
See TBMP §1201.05 for further information about appealable versus petitionable subject matter in examination.
Post Registration
Trademark Rule 2.146(b) applies only to questions of substance that arise during ex parte examination of applications for registration. The Director considers questions of substance, such as whether a proposed amendment materially alters a registered mark, or whether a specimen supports use of a registered mark, when reviewing the action of a Post Registration examiner in connection with a proposed amendment filed under 15 U.S.C. §1057, or an affidavit of use under 15 U.S.C. §1058 or §1141k. The decisions of Post Registration examiners under 15 U.S.C. §§1057, 1058, 1059, and 1141k may not be appealed to the Trademark Trial and Appeal Board.
Inter Partes Proceedings Before Trademark Trial and Appeal Board
In an inter partes proceeding before the Trademark Trial and Appeal Board, a party may petition the Director to review an order or decision of the Board that concerns a matter of procedure and does not put an end to the litigation before the Board. See TBMP §§901.02(a) and 905.
A petition should include a verified statement of the relevant facts, the points to be reviewed, the requested action or relief, and the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.146(c). The petition should be accompanied by a supporting brief and any evidence to be considered.
A person must have standing to file a petition. See Ex parte Lasek, 115 USPQ 145 (Comm’r Pats. 1957).
There is no provision in the Trademark Act or Rules of Practice for intercession by a third party in an ex parte matter. Accordingly, petitions by third parties to review actions taken in ex parte matters are denied.
A petition must be accompanied by the fee required by 37 C.F.R. §2.6.
Any petition that is not accompanied by the required fee is incomplete. A staff attorney or paralegal in the Office of the Commissioner for Trademarks will notify the petitioner in writing that the petition is incomplete and grant the petitioner 30 days to submit the fee. If the fee is not submitted within the time allowed, the petition is denied without consideration on the merits, because the petitioner has not met the requirements for filing a petition. 37 C.F.R. §2.146(c).
A petition fee will be waived only in an extraordinary situation (see TMEP §1708), or if the record clearly shows that the petition was the result of a USPTO error. When requesting waiver of a fee, it is recommended that the petitioner submit the fee, but include a request that the fee be refunded because the petition was the result of a USPTO error. This will expedite consideration of the petition if the request for waiver of the petition fee is denied.
If a check submitted as a petition fee is returned to the USPTO unpaid, or an electronic funds transfer or credit card is refused or charged back by a financial institution, the petitioner must resubmit the petition fee, along with a $50 fee for processing the payment that was refused or charged back, before the petition will be considered on the merits. 37 C.F.R. §2.6(b)(12). See TMEP §405.06.
A petition should include a statement of the relevant facts, and should be accompanied by any evidence to be considered. Under 37 C.F.R. §2.146(c), when facts are to be proved, the petitioner must submit proof in the form of an affidavit or declaration under 37 C.F.R. §2.20.
An affidavit or declaration supporting a petition should be based on firsthand knowledge. For example, if the petition arises from the loss or misplacement of a document submitted to the USPTO, it should be accompanied by the affidavit or declaration of the person who sent the document, attesting to the date of submission and identifying the document filed with the petition as a true copy of the document previously filed.
When a petition includes an unverified assertion that is not supported by evidence, a staff attorney or paralegal in the Office of the Commissioner for Trademarks will notify the petitioner that an affidavit or declaration is required, and grant the petitioner 30 days to submit the necessary verification. If the petitioner does not submit a verification within the time allowed, the petition will be denied, or, in appropriate cases, a decision on petition will be rendered based on the information in the record, without consideration of the unverified assertion.
This procedure is also followed with respect to physical evidence. If physical evidence is available, such as a postcard receipt that shows the date of actual receipt of a document in the USPTO (see TMEP §303.02(c)), or a copy of a cancelled check that shows receipt of the filing fee for a missing paper, the petitioner should include the evidence with the initial petition. However, if the evidence is omitted from the initial filing, the USPTO will give the petitioner an opportunity to supplement the petition within a specified time limit.
To avoid prejudicing the rights of third parties, petitions must be filed within a reasonable time after the disputed event. In many cases, deadlines for filing petitions are expressly stated in the rules. The following petition deadlines run from the mailing date of the action or order of which the petitioner seeks review:
If the rules do not provide an express deadline, the petition must be filed within two months of the date of mailing of the action from which relief is requested, under 37 C.F.R. §2.146(d).
If there is no “mailing of an action,” the two-month “catchall deadline” of 37 C.F.R. §2.146(d) runs from the date of actual knowledge, or the date of the phone call or other communication that prompts the filing of the petition. The two-month deadline of 37 C.F.R. §2.146(d) also applies where the petition alleges that the petitioner did not receive the action that prompts the filing of the petition, running from the date of the petitioner’s actual knowledge of said action.
The time limits set forth in the rules are strictly enforced. Petitions filed after the expiration of the deadlines are denied as untimely. If the petitioner can show that extraordinary circumstances caused the delay in filing the petition, the petitioner may request waiver of these time limits, pursuant to 37 C.F.R. §§2.146(a)(5) and 2.148. See TMEP §1708 regarding waiver of rules.
The petition fee is refunded when a petition is denied as untimely.
Petitions filed using the certificate of mailing and certificate of transmission procedures of 37 C.F.R. §2.197 will be considered timely if mailed or transmitted to the USPTO by the due date, with a certificate that meets the requirements of 37 C.F.R. §2.197(a)(1) (see TMEP §§305.02 and 306.05 et seq.).
See TMEP §1705.05 regarding the duty to exercise due diligence in monitoring the status of pending matters.
Applicants and registrants are responsible for tracking the status of matters pending before the USPTO. When a petitioner seeks to reactivate an application or registration that was abandoned, cancelled, or expired due to the loss or mishandling of documents sent to or from the USPTO, the USPTO may deny the petition if the petitioner was not diligent in checking the status of the application or registration, even if the petitioner can show that the USPTO actually received documents, or declares that a notice from the USPTO was never received by the petitioner. 37 C.F.R. §2.146(i).
The required showing of diligence is necessary to protect third parties who may be harmed by the removal and later reinsertion of an application or registration into the USPTO’s database. For example, a third party may have diligently searched USPTO records and begun using a mark because the search showed no earlier-filed conflicting marks, or an examining attorney may have searched USPTO records and approved a later-filed application for a conflicting mark because the examining attorney was unaware of the earlier-filed application.
The USPTO generally processes applications, responses and other papers in the order in which they are received. Since it is reasonable to expect some notice from the USPTO about a pending matter within six months of the filing or receipt of a document, a party who has not received the expected written action or telephone call from the USPTO within that time frame should be on notice that the filing may have been lost. The party awaiting notification has the burden of inquiring as to the cause of the delay, and requesting corrective action in writing when necessary.
To be considered diligent, a petitioner must:
37 C.F.R. §2.146(i). See notice at 68 FR 55748 (Sept. 26, 2003).
Applicants and registrants are encouraged to check the status on each six-month anniversary of the filing of an application for registration, §8 affidavit or §9 renewal application to avoid abandonment or cancellation and to ensure that they meet the diligence requirement. For example, if an application was filed on November 1, 2006, the applicant should check the status on May 1, 2007, November 1, 2007, and on each six-month anniversary thereafter, until a registration is issued.
However, to provide applicants, registrants and their attorneys with flexibility in docketing deadlines for both responses and status checks, an applicant or registrant will meet the diligence requirement if it checks the status within six months of the filing or receipt of a paper for which further action by the USPTO is expected.
Applicants and registrants can check the status of an application or registration through the Trademark Applications and Registrations Retrieval (“TARR”) database on the USPTO website at http://tarr.uspto.gov, which is available 24 hours a day, seven days a week. The party should print the TARR screen and place it in the party’s own file, in order to have a record of the status inquiry and the information learned.
A party who does not have access to the Internet can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to determine the status. After making a telephone status inquiry, a party should make a note in the party’s own file as to the date of the status inquiry and the information learned. No further documentation is required to establish that the status inquiry was made. Written status inquiries are discouraged, because they may delay processing of the application or registration.
If a status inquiry reveals that a paper was not received, or that some other problem exists, corrective action should be promptly requested in writing. 37 C.F.R. §2.146(i)(3). Petitions should be directed to the Office of the Commissioner for Trademarks. Requests for reinstatement should be directed to the Paralegal Specialists in the Office of the Commissioner for Trademarks, the supervisory legal instruments examiner in the law office, or the supervisor of the ITU Unit or Post Registration Section. See TMEP §§1712 et seq. regarding requests for reinstatement.
Where a registrant has proof that a USPTO error caused a registration to expire or be cancelled due to failure to file an affidavit or declaration of use or excusable nonuse under 15 U.S.C. §1058 or §1141k (“§8 affidavit” or “§71 affidavit”), a renewal application under 15 U.S.C. §1059, or a response to an examiner’s Office action refusing to accept an affidavit of use or excusable nonuse or a renewal application, the registrant may file a request for reinstatement. See TMEP §1712.02 regarding the types of proof of USPTO error that will support a request for reinstatement. Generally, where there is proof that a registration was cancelled solely due to a USPTO error, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status of the §8 affidavit or renewal application. However, if a registrant receives a written notice of cancellation, or has actual notice that a registration was cancelled, the USPTO will deny the request for reinstatement as untimely if it was not filed: (1) within two months of the mailing date of the cancellation notice, or (2) within two months of actual notice of cancellation; if the registrant did not receive a written cancellation notice. 37 C.F.R. §2.146(d).
A request to reinstate an application abandoned due to USPTO error (see TMEP §1712.01) may be denied if the applicant was not diligent in monitoring the status of the application. 37 C.F.R. §§2.66(a)(2) and 2.146(i).
37 C.F.R. §2.146(g). The mere filing of a petition ... will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board nor stay the period for replying to an Office action in an application except when a stay is specifically requested and is granted or when §§2.63(b) and 2.65 are applicable to an ex parte application.
Filing a petition does not stay the period for replying to an Office action, except when a stay is specifically requested and granted under 37 C.F.R. §2.146(g), or when 37 C.F.R. §§2.63(b) and 2.65 are applicable. Any request to stay a deadline for filing a response to an Office action or notice of appeal should be directed to the Office of the Commissioner for Trademarks. If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Commissioner for Trademarks. The examining attorney should not suspend action on an application pending a decision on petition.
A request to suspend a proceeding before the Trademark Trial and Appeal Board pending a decision on petition should be directed to the Board. 37 C.F.R. §2.117(c). See TBMP §§510 et seq. and 1213 regarding suspension of Board proceedings.
Filing a petition to revive an application abandoned for failure to file a proper statement of use or request for an extension of time to file a statement of use does not stay the time for filing a statement of use or further extension request(s). See TMEP §1714.01(b)(i).
A petition to the Director under 37 C.F.R. §2.146 must be signed by the petitioner or by a practitioner authorized to practice before the Office pursuant to 37 C.F.R. §10.14 (see TMEP §602). If the petitioner is represented by a practitioner meeting the requirements of 37 C.F.R. §10.14, the practitioner must sign the petition. 37 C.F.R. §10.18(a). If the petitioner is not represented by a practitioner meeting the requirements of 37 C.F.R. §10.14, the petition must be signed by someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership). TMEP §605.02.
Petitions to the Director under 37 C.F.R. §2.146 may be accompanied by separate verifications, as required by 37 C.F.R. §2.146(c), signed by someone who meets the requirements of 15 U.S.C. §2.33 (see TMEP §804.04). Generally, the Office does not question the authority of a person signing a verification of facts on behalf of a petitioner. However, a non-attorney who is authorized to verify facts under 37 C.F.R. §2.33(a)(2) is not entitled to sign petitions, unless he or she has legal authority to bind the petitioner. Under 5 U.S.C. §500(d) and 37 C.F.R. §10.14(e), non-attorneys may not represent a party in a trademark proceeding before the USPTO. See TMEP §602.03. Therefore, the petition itself must be separately signed by a practitioner authorized to practice before the Office pursuant to 37 C.F.R. §10.14, or by someone with legal authority to bind the petitioner.
Petitions to revive under 37 C.F.R. §2.66 (see TMEP §§1714 et seq.) must include a statement that the delay was unintentional, signed by someone with firsthand knowledge. 37 C.F.R. §§2.66(b)(2) and (c)(2); TMEP §1714.01(e). Where a petition to revive under 37 C.F.R. §2.66 consists only of a statement that the delay was unintentional and/or that the applicant did not receive an Office action or notice of allowance, the petition may be signed by someone with firsthand knowledge, and no separate signature by an attorney or someone with legal authority to bind the petitioner is required. However, any response to an Office action accompanying the petition must be signed by a proper party. 37 C.F.R. §10.18(a); TMEP §712.
If it appears that a petition was signed by an improper party, the staff attorney or paralegal reviewing the petition will follow the procedures in TMEP §§605.05 et seq. for processing papers signed by unauthorized parties.
See TMEP §§712.01(a) et seq. for guidelines on persons who have legal authority to bind various types of entities.
See also TMEP 804.05 regarding signature of documents filed electronically.
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may request reconsideration by: (1) filing the request for reconsideration within two months of the mailing date of the decision denying the petition; and (2) paying a second petition fee under 37 C.F.R. §2.6.
If the petitioner presents new facts that warrant equitable relief, the request for reconsideration may be granted. Any request for reconsideration that merely reiterates or expands on arguments previously presented will be denied.
Since contested matters must be brought to a conclusion within a reasonable time, a second request for reconsideration of a decision on petition will be granted only in rare situations, when the petitioner presents significant facts or evidence not previously available. In re American National Bank and Trust Company of Chicago, 33 USPQ2d 1535 (Comm’r Pats. 1993).
Under 15 U.S.C. §1071(a)(1) and 37 C.F.R. §2.145(a), a registrant who is adversely affected by the Director’s decision regarding an affidavit or declaration under 15 U.S.C. §1058 or a renewal application may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on petition. 15 U.S.C. §§1071(a)(1) and (b)(1); 37 C.F.R. §§2.145(a) and 2.145(c).
Other types of Director’s decisions are not subject to appeal. See In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 162 USPQ 106 (C.C.P.A. 1969).
The deadline for filing an appeal or commencing a civil action is two months from the mailing date of the decision. 15 U.S.C. §§1071(a)(2) and (b)(1); 37 C.F.R. §2.145(d)(1). Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.
The standard of review on petition depends on the particular section of the rules under which the petition is filed.
In review of an examining attorney’s formal requirement under 37 C.F.R. §§2.63(b) and 2.146(a)(1), the standard of review is whether the examining attorney’s judgment was correct, the same standard that the Trademark Trial and Appeal Board would use if it were considering the requirement on appeal. In re Du Pont Merck Pharmaceutical Co., 34 USPQ2d 1778 (Comm’r Pats. 1995); In re Stenographic Machines, Inc., 199 USPQ 313 (Comm’r Pats. 1978). However, in review of an examining attorney’s action under 37 C.F.R. §2.146(a)(3), the Director will reverse the examining attorney only upon a finding of clear error or abuse of discretion. In re GTE Education Services, 34 USPQ2d 1478 (Comm’r Pats. 1994); In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d 1393 (Comm’r Pats. 1993).
The Director also uses the clear error or abuse of discretion standard when reviewing an action of the Trademark Trial and Appeal Board under 37 C.F.R. §2.146(a)(3). Riko Enterprises, Inc. v. Lindsley, 198 USPQ 480 (Comm’r Pats. 1977).
The Director reviews the actions of Post Registration examiners on affidavits of use or excusable nonuse under 15 U.S.C. §1058 or §1141k, renewal applications under 15 U.S.C. §1059, and amendments to registrations under 15 U.S.C. §1057, to determine whether the judgment of the examiner was correct. See In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996) (announcing change in standard of review of petitions to review Post Registration examiners’ decisions on amendments to registrations under 15 U.S.C. §1057).
The Director reviews the denial of an application filing date to determine whether the denial was correct. See TMEP §204.02.
Under 35 U.S.C. §2 and 37 C.F.R. §2.146(a)(3), the Director may exercise supervisory authority on petition in appropriate circumstances. As noted in TMEP §1706, the Director may review the actions of an examiner or paralegal under 37 C.F.R. §2.146(a)(3), using the “clear error” standard of review.
In some cases, the Director will exercise supervisory authority under 37 C.F.R. §2.146(a)(3) even where there has been no clear error or abuse of discretion, if a petitioner can show that it has substantially complied with the requirements of the statute or rules. See In re Carnicon Development Company, 34 USPQ2d 1541 (Comm’r Pats. 1992) (assertion of verified date of first use, coupled with statement of current method of use, interpreted as substantially in compliance with minimum filing requirement of 37 C.F.R. §2.88(e)(3) for an allegation in a statement of use that the “mark is in use in commerce.”).
The Director may also exercise supervisory authority under 37 C.F.R. §2.146(a)(3) to make changes to USPTO practice. See In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996) (announcing change in standard of review of petitions to review Post Registration examiners’ decisions on amendments to registrations under 15 U.S.C. §1057).
Under 37 C.F.R. §§2.146(a)(5) and 2.148, the Director may waive any provision of the rules that is not a provision of the statute, when: (1) an extraordinary situation exists; (2) justice requires; and (3) no other party is injured.
All three of the above conditions must be satisfied before a waiver will be granted, and the burden is on the petitioner to show that the situation is extraordinary. Disasters like fires, hurricanes and snowstorms are considered to be extraordinary situations. Extraordinary circumstances have also been found in certain cases where a petitioner avers by affidavit or declaration that it did not receive an Office action issued regarding an affidavit of use under 15 U.S.C. §1058 or renewal application under 15 U.S.C. §1059.
On the other hand, oversights and inadvertent errors that could have been avoided with the exercise of reasonable care are not considered to be “extraordinary situations.” In re Universal Card Group, Inc., 25 USPQ2d 1157 (Comm’r Pats. 1992) (docketing error not extraordinary situation); In re Merck & Co., Inc., 24 USPQ2d 1317 (Comm’r Pats. 1992) (inadvertent misidentification of serial number in request for extension of time to oppose not extraordinary situation); In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm’r Pats. 1990) (typographical error not extraordinary situation).
A change of attorneys is not considered to be an extraordinary situation, In re Unistar Radio Networks, Inc., 30 USPQ2d 1390 (Comm’r Pats. 1993), nor is a misunderstanding or lack of awareness of the requirements of the Trademark Rules of Practice considered extraordinary. In re Buckhead Marketing & Distribution, Inc., 71 USPQ2d 1620 (Dir USPTO 2004) (applicant’s lack of knowledge of application filing fee increase not extraordinary situation); B and E Sales Co. Inc. v. Andrew Jergens Co., 7 USPQ2d 1906 (Comm’r Pats. 1988); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pats. 1985). Errors by attorneys are imputed to the client and the client is bound by the consequences. In re Sotheby’s Inc., 18 USPQ2d 1969 (Comm’r Pats. 1989).
Mail delays are not considered extraordinary, because the Trademark Rules of Practice provide procedures designed to avoid lateness due to mail delay. In re Sportco, Inc., 209 USPQ 671 (Comm’r Pats. 1980); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pats. 1978). See 37 C.F.R. §2.197 regarding certificates of mailing.
The Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059 or affidavit of use or excusable nonuse under 15 U.S.C. §1058 or §1141k. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).
Pursuant to 35 U.S.C. §3(a) and (b), the Director has delegated the authority to decide trademark-related petitions filed under 37 C.F.R. §§2.66 and 2.146, and to exercise supervisory authority in trademark-related matters pursuant to 35 U.S.C. §2, to the Commissioner for Trademarks.
Under 35 U.S.C. §3(b)(3)(B) and 37 C.F.R. §2.146(h), the Commissioner for Trademarks may redelegate this authority to the Deputy Commissioner for Trademark Examination Policy or the Deputy Commissioner for Trademark Operations, who may further redelegate the authority.
Authority to decide trademark-related petitions filed under 37 C.F.R. §2.146 has been delegated to the Deputy Commissioner for Trademark Examination Policy. Authority to decide the following petitions has been delegated to the staff attorneys and paralegal specialists in the Office of the Commissioner for Trademarks:
The USPTO generally examines applications in the order in which they are received. A petition to make “special” is a request to advance the initial examination of an application out of its regular order.
A petition to make “special” must be accompanied by: (1) the fee required by 37 C.F.R. §2.6; (2) an explanation of why special action is requested; and (3) a statement of facts that shows that special action is justified. The statement of facts should be supported by an affidavit or declaration under 37 C.F.R. §2.20.
When a new application for registration is accompanied by a petition to make “special,” the USPTO will give the application a serial number and process the fees before routing the application to the Office of the Commissioner for Trademarks for a decision on the petition.
An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon applicant’s request. No petition is required in this situation. However, the mark in the new application must be identical to the mark in the cancelled or expired registration, and the goods or services in the new application must be identical to or narrower than the goods or services in the cancelled or expired registration, or the USPTO will not grant “special” status.
Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. A petition to make “special” is denied when the circumstances would apply equally to a large number of other applicants.
The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants.
The most common reasons for granting petitions to make “special” are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.
Each petition to make “special,” together with the petition decision, is made part of the record. If the petition is granted, the Trademark Reporting and Monitoring (“TRAM”) System will reflect that the application has been marked for “special” handling.
If an application is denied a filing date and the applicant wants the filing date restored, the usual procedure is to file a petition under 37 C.F.R. §2.146.
However, in the limited circumstances listed below, the applicant may request restoration of the filing date without a formal petition:
(1) The USPTO has no record of receipt of the application, but the applicant presents proof that a complete application was filed through the Trademark Electronic Application System (“TEAS”), in the form of a copy of a TEAS “Success” page confirming receipt of the application (see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) The USPTO has no record of receipt of the application, but the applicant presents proof of actual receipt in the form of evidence that a USPTO employee signed for or acknowledged the envelope containing the application (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(3) A filing date was denied, but the application itself clearly shows on its face that the applicant met all relevant filing date requirements on the filing date being requested. The applicant must resubmit any returned documents showing the cancelled filing date.
(4) A filing date was denied to a paper application due to the omission of an element, such as a drawing, but the element was in fact included in the application as originally submitted, and the applicant submits all of the following: (a) a return postcard indicating that the USPTO specifically acknowledged receipt of the element in question (see TMEP §303.02(c)); (b) a substitute to replace the lost element; (c) the application papers that were returned; and (d) a copy of the Notice of Incomplete Trademark Application.
(5) Applicant provides evidence that applicant attempted to file the application through TEAS, but TEAS was unavailable due to technical problems (e.g. a computer screen printout showing receipt of a “Fatal Error - Access Denied” error message, or a copy of an e-mail message from the TEAS Help Desk stating that the TEAS application forms were temporarily unavailable). See In re Henkel Loctite Corp., 69 USPQ2d 1638 (Dir USPTO 2003).
In the above situations, a Staff Attorney or Paralegal Specialist in the Office of the Commissioner for Trademarks may restore the original filing date without a formal petition or a petition fee. In all other circumstances, the applicant must file a formal petition, including the petition fee required by 37 C.F.R. §2.6.
Procedure for Filing Request. In any request to restore an application filing date, the applicant should first refile the application, with the application filing fee required by 37 C.F.R. §2.6(a)(1)(i), (ii) or (iii), as appropriate. The Office recommends using TEAS at http://www.uspto.gov/teas/index.html. The fee must be included even if the applicant has not yet received a refund of the fee previously paid.
After the applicant receives a new serial number, the applicant should fax the request to restore the original filing date to the Office of Petitions at 571-273-8950. This request should: (1) be captioned as a “Request for Restoration of the Filing Date;” (2) state the reason(s) why the applicant believes the filing date was denied in error; (3) include the new serial number; and (4) include a copy of any Notice of Incomplete Trademark Application received from the Office.
Time for Filing Request. All requests to restore filing dates, whether made by formal petition or informal request, must be filed promptly. If the USPTO mails a notice advising the applicant of the denial or cancellation of the filing date, the request to restore the filing date must be filed within two months of the mailing date of the action, or it will be denied as untimely. 37 C.F.R. §2.146(d). Although applicants have two months from the mailing date of this notice to file a request to restore the original filing date, it is recommended that an applicant promptly refile the application, and file the request to restore the filing date immediately upon receipt of the new serial number, to minimize the delay in receiving a filing date, and to reduce the impact on third parties who may rely on the current filing date information in the trademark database.
Furthermore, applicants must exercise due diligence in monitoring the status of applications. 37 C.F.R. §2.146(i); TMEP §1705.05. To be considered diligent, an applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. §2.146(i)(1).
Evidence of Missing Element Required. If the USPTO denies a filing date due to the omission of an element required by 37 C.F.R. §2.21, and the applicant declares that the missing element was in fact included with the application as filed, the Director will not grant a petition to restore or reinstate the filing date unless: (1) the applicant provides evidence that the element was received in the USPTO on the requested filing date; or (2) there is an image of the element in the USPTO’s Trademark Image Capture and Retrieval System (“TICRS”) database.
The USPTO scans images of applications almost immediately after they are received in the USPTO and uploads these scanned images into TICRS. Because very little time passes between receipt of the application and creation of the scanned image, it is highly likely that the TICRS file of an application will be an exact copy of what was received in the USPTO. Accordingly, if TICRS does not include an image of a missing element that a petitioner declares was submitted with the application, the Director will not grant the petition unless there is evidence to corroborate the petitioner’s declaration. An example of corroborating evidence is a postcard submitted with the original application that bears: (1) a USPTO date stamp; and (2) an itemized list of materials submitted that includes the missing element. In re Group Falck A/S, 62 USPQ2d 1797, 1798 (Dir USPTO 2002).
If an application was inadvertently abandoned due to a USPTO error, an applicant may file a request to reinstate the application, instead of a formal petition to revive. There is no fee for a request for reinstatement. Such a request should be captioned as a “Request for Reinstatement.” Requests for reinstatement are handled by the Paralegal Specialists in the Office of the Commissioner for Trademarks, or by the supervisory legal instruments examiners in the ITU Unit or the Examination Support Unit.
The following are examples of situations where the USPTO may reinstate an application that was held abandoned for failure to timely file a statement of use or response to an Office action:
(1) The applicant presents proof that a response to an Office action, statement of use or request for extension of time to file a statement of use was timely filed through TEAS, in the form of a copy of a TEAS “Success” page confirming receipt of the application (see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) There is an image of the timely filed response, statement of use or extension request in TICRS.
(3) The timely filed document is found in the USPTO.
(4) The applicant supplies a copy of the document and proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
(5) The applicant supplies a copy of the document and proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of facsimile transmission requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
(6) The applicant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the applicant specifically refers to the document at issue (see TMEP §303.02(c)).
(7) The applicant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears an Office date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The request for reinstatement must include an affidavit or declaration under 37 C.F.R. §2.20 that attests to the contents of the filing.
(9) The USPTO sent an Office action or notice of allowance to the wrong address due to a USPTO error. A “USPTO error in sending an action or notice to the wrong address” means that the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the mailing date of the action or notice. See TMEP §603.03 regarding the applicant’s duty to notify the USPTO when the correspondence address changes.
A request for reinstatement must be filed within two months of the mailing date of the notice of abandonment or, if the applicant has not received a notice of abandonment, within two months of the date the applicant or the applicant’s attorney had actual knowledge that the application was abandoned. 37 C.F.R. §2.146(d).
If the applicant did not receive a notice of abandonment, the applicant must have been duly diligent in monitoring the status of the application, or the request for reinstatement will be denied. To be duly diligent, the applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. §2.146(i)(1); TMEP §1705.05.
When an application is reinstated, a computer generated notice of reinstatement is sent to the correspondence address of record. The TRAM System and TARR database are updated accordingly.
If the applicant is not entitled to reinstatement, a request for reinstatement may be considered as a petition to revive. Any petition to revive must meet all the requirements of 37 C.F.R. §2.66. See TMEP §§1714 et seq.
Request for Reinstatement
A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that USPTO error caused a registration to be cancelled or expired due to failure to file: (1) an affidavit or declaration of use or excusable nonuse under 15 U.S.C. §1058 or §1141k (“§8 affidavit” or “§71 affidavit”); (2) a renewal application under 15 U.S.C. §1059; or (3) a response to an examiner’s Office action refusing to accept an affidavit or renewal application. There is no fee for a request for reinstatement. A request that the USPTO reinstate a registration that has been cancelled or expired due to USPTO error should be captioned as a “Request for Reinstatement of Registration,” and should be directed to the Supervisor of the Post Registration Section of the Office.
The following are examples of situations where the USPTO may reinstate a cancelled or expired registration:
(1) The registrant presents proof that a proper §8 affidavit or renewal application was timely filed through TEAS, in the form of a copy of a TEAS “Success” page confirming receipt of the document (see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) There is an image of a timely filed affidavit, renewal application, or response to Office action in TICRS.
(3) The timely filed affidavit, renewal application, or response to Office action is found in the USPTO.
(4) The registrant supplies a copy of the affidavit, renewal application, or response to Office action, with proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
(5) The registrant supplies a copy of the affidavit, renewal application, or response to Office action, with proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of transmission requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
(6) The registrant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the registrant specifically refers to the §8 affidavit, §71 affidavit, renewal application, or response (see TMEP §303.02(c)).
(7) The registrant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The registrant must submit an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the original filing.
(9) The USPTO sent an Office action to the wrong address due to an Office error. A “USPTO error in sending an action to the wrong address” means that the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the mailing date of the action.
(10) The registrant supplies a copy of a response to a Post Registration Office action, with proof that it was timely transmitted to the USPTO by Internet e-mail and accompanied by a certificate of transmission under 37 C.F.R. §2.197. See notice at 64 Fed. Reg. 33056, 33063 (June 21, 1999). NOTE: Section 8 affidavits, §71 affidavits, and renewal applications cannot be filed by e-mail. TMEP §304.02.
Generally, where there is proof that a registration was cancelled solely due to USPTO error, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status of the §8 affidavit or renewal application. However, if a registrant receives a written notice of cancellation, or has actual notice that a registration was cancelled, the USPTO will deny the request for reinstatement as untimely if it was not filed: (1) within two months of the mailing date of the cancellation notice; or (2) within two months of actual notice of cancellation, if the registrant did not receive a written cancellation notice. 37 C.F.R. §2.146(d). See TMEP §1705.04 regarding timeliness.
Formal Petition
If a registrant failed to timely respond to an examiner’s Office action refusing to accept a §8 affidavit or renewal application due to an extraordinary situation, but the registrant does not have the proof of USPTO error that would support a request for reinstatement, the registrant may file a formal petition under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive a rule and accept a late response. Pursuant to 37 C.F.R. §2.146(d), the petition must be filed within two months of the cancellation notice. If the registrant did not receive the cancellation notice, the petition must be filed within two months of the date of actual notice of the cancellation, and the record must show that the registrant was diligent in monitoring the status of the registration, pursuant to 37 C.F.R. §2.146(i). See TMEP §§1705.04 and 1705.05 regarding timeliness and diligence.
The unintentional delay standard of 37 C.F.R. §2.66 does not apply to registered marks. TMEP §1714.01(f)(ii). Under 37 C.F.R. §§2.146(a)(5) and 2.148, the Director may waive any provision of the Rules that is not a provision of the statute, only when an extraordinary situation exists, justice requires, and no other party is injured. See TMEP §1708. The failure to receive an Office action is considered an extraordinary situation that justifies a waiver of a rule. Therefore, if the registrant did not receive an examiner’s Office action refusing to accept an affidavit or renewal application, but the registrant does not have proof that non-receipt was due to USPTO error (see paragraph 9 above), the registrant may file a formal petition under 37 C.F.R. §2.146.
The Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059 or affidavit of use of a registered mark under 15 U.S.C. §1058. Checkers Drive-In Restaurants Inc. v. Commissioner of Patents and Trademarks., 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995); In re Mother Tucker's Food Experience (Canada) Inc., 925 F.2d 1402, 1406, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991); In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). Therefore, if the registrant did not timely file a §8 affidavit or renewal application, a petition to extend or waive the statutory deadline will be denied, regardless of the reason for the delay.
If a registrant contends that a §8 affidavit or renewal application was timely filed, but the registrant does not have proof that the §8 affidavit or renewal application was received in the USPTO before the due date, the Director will not grant a petition to accept the affidavit or renewal application.
Under 37 C.F.R. §2.65(a), an application may become abandoned when an applicant’s response, although received within the six-month response period, is incomplete. See TMEP §§718.03 et seq. regarding incomplete responses.
When an examining attorney holds an application abandoned because the applicant’s response is incomplete (see TMEP §718.03(a)), the applicant may petition the Director to reverse the holding under 37 C.F.R. §2.146. However, the Director will reverse the examining attorney’s holding of abandonment only if there is clear error or abuse of discretion. In re GTE Education Services, 34 USPQ2d 1478 (Comm’r Pats. 1994); In re Legendary, Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992). Note: The “unintentional delay” standard for reviving abandoned applications pursuant to 37 C.F.R. §2.66(a) does not apply to applications held abandoned under 37 C.F.R. §2.65(a). See TMEP §1714.01(f)(ii).
If an examining attorney issues an Office action granting an applicant additional time to complete a response under 37 C.F.R. §2.65(b) (see TMEP §718.03(b)), and the applicant does not receive the action, or if the applicant is unable to respond to the action due to some other extraordinary circumstance, the applicant may file a petition to the Director. If the petition is granted, the USPTO will send a notice to the applicant directing the applicant to view the action on the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://portal.uspto.gov/external/portal/tow, and providing the applicant with a new 30-day period in which to perfect the response. This does not extend the time for filing a notice of appeal or filing a petition to review the examining attorney’s action under 37 C.F.R. §2.63(b). 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
37 C.F.R. §2.66. Revival of abandoned applications.
(a) The applicant may file a petition to revive an application abandoned because the applicant did not timely respond to an Office action or notice of allowance, if the delay was unintentional. The applicant must file the petition:
(1) Within two months of the mailing date of the notice of abandonment; or
(2) Within two months of actual knowledge of the abandonment, if the applicant did not receive the notice of abandonment, and the applicant was diligent in checking the status of the application every six months in accordance with §2.146(i).
(b) The requirements for filing a petition to revive an application abandoned because the applicant did not timely respond to an Office action are:
(1) The petition fee required by §2.6;
(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional; and
(3) Unless the applicant alleges that it did not receive the Office action, the proposed response.
(c) The requirements for filing a petition to revive an application abandoned because the applicant did not timely respond to a notice of allowance are:
(1) The petition fee required by §2.6;
(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional;
(3) Unless the applicant alleges that it did not receive the notice of allowance and requests cancellation of the notice of allowance, the required fees for the number of requests for extensions of time to file a statement of use that the applicant should have filed under §2.89 if the application had never been abandoned;
(4) Unless the applicant alleges that it did not receive the notice of allowance and requests cancellation of the notice of allowance, either a statement of use under §2.88 or a request for an extension of time to file a statement of use under §2.89; and
(5) Unless a statement of use is filed with or before the petition, or the applicant alleges that it did not receive the notice of allowance and requests cancellation of the notice of allowance, the applicant must file any further requests for extensions of time to file a statement of use under §2.89 that become due while the petition is pending, or file a statement of use under §2.88.
(d) In an application under section 1(b) of the Act, the Director will not grant the petition if this would permit the filing of a statement of use more than 36 months after the mailing date of the notice of allowance under section 13(b)(2) of the Act.
(e) The Director will grant the petition to revive if the applicant complies with the requirements listed above and establishes that the delay in responding was unintentional.
(f) If the Director denies a petition, the applicant may request reconsideration, if the applicant:
(1) Files the request within two months of the mailing date of the decision denying the petition; and
(2) Pays a second petition fee under §2.6.
Upon a proper submission, an abandoned application can be revived under 37 C.F.R. §2.66 if the delay in responding to an Office action or notice of allowance was unintentional. 15 U.S.C. §§1051(d)(4) and 1062(b). Petitions filed under 37 C.F.R. §2.66 are handled by the paralegal specialists in the Office of the Commissioner for Trademarks. See TMEP §1709 regarding the delegation of authority to decide petitions.
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s Office action are set forth in 37 C.F.R. §2.66(b). See TMEP §1714.01(a). The procedural requirements for filing a petition to revive an application abandoned for failure to timely file a statement of use or request for extension of time to file a statement of use are set forth in 37 C.F.R. §2.66(c). See TMEP §§1714.01(b) and (c).
When a petition does not meet the procedural requirements of 37 C.F.R. §2.66, a paralegal in the Office of the Commissioner for Trademarks will notify the petitioner that the petition does not meet the requirements of the rule, and grant the petitioner 30 days to supplement the petition by submitting the missing element(s). If the petitioner does not submit the necessary information or fees within the time allowed, the petition will be denied.
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s Office action are listed in 37 C.F.R. §2.66(b). The petition must include all of the following:
(1) The petition fee required by 37 C.F.R. §2.6;
(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional. The statement does not have to be verified; and
(3) Unless the applicant alleges that it did not receive the Office action, the applicant’s proposed response to the Office action must accompany the petition. 37 C.F.R. §2.66(b)(3).
NOTE: Response to Final Action. The USPTO will not grant a petition to revive an application abandoned for failure to respond to a final Office action unless the applicant submits a proper response, as defined in 37 C.F.R. §2.64(a), or states that it did not receive the Office action. If a petition does not include a proper response to a final action, the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting the required response. If the applicant does not submit a proper response within the time allowed, the petition will be denied. After a final action, the only response that an applicant may make as a matter of right is: (1) either an appeal to the Trademark Trial and Appeal Board (see TMEP §§1501 et seq.) or a petition under 2.63(b), whichever is appropriate; or (2) compliance with any requirement made by the examining attorney. 37 C.F.R. §2.64(a). See TMEP §715.01. A request for reconsideration is not a proper response to a final action. See TMEP §§715.03 and 1714.01(f)(ii). In some cases, after a final refusal of registration on the Principal Register, an amendment requesting registration on the Supplemental Register or registration under 15 U.S.C. §1052(f) may also be a proper response. See TMEP §§714.05(a)(i), 816.04 and 1212.02(h).
If the petition states that applicant did not receive the Office action, and the petition is granted, the USPTO will issue a new Office action and provide the applicant with a new response period, or, if all issues previously raised remain the same, the USPTO will send a notice to the applicant directing the applicant to view the action on the TDR portal on the USPTO website at www.uspto.gov, and providing the applicant with a new six-month period in which to file a response.
See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c). If the applicant received the notice of allowance, the petition must include all of the following:
(1) The petition fee required by 37 C.F.R. §2.6;
(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional. The statement does not have to be verified;
(3) Either a statement of use under 37 C.F.R. §2.88 or a request for an extension of time to file a statement of use under 37 C.F.R. §2.89;
(4) The required fees for the number of extension requests that the applicant should have filed if the application had never been abandoned;
Example: If a notice of allowance was issued January 14, 2007, and a petition to revive was filed July 23, 2007, the petition must be accompanied by: (1) either a statement of use or request for an extension of time to file a statement of use, with the required filing fee; and (2) the fee for the extension request that was due July 14, 2007. These fees are in addition to the standard petition fee; and
(5) Unless a statement of use is filed with or before the petition, the applicant must file any further requests for extensions of time to file a statement of use that become due while the petition is pending, or file a statement of use. See TMEP §1714.01(b)(i).
The USPTO will not grant a petition to revive an intent-to-use application if granting the petition would extend the period for filing the statement of use beyond thirty-six months after the mailing date of the notice of allowance. 15 U.S.C. §§1051(d)(1) and (2); 37 C.F.R. §2.66(d). In these cases, the petition will be denied, and the petition fee will be refunded.
See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.
Filing a petition to revive does not stay the time for filing a statement of use or further extension request(s). When a petition is granted, the term of the six-month extension that was the subject of the petition runs from the date of the expiration of the previously existing deadline for filing a statement of use. 37 C.F.R. §2.89(g). Thus, a petitioner must either file a statement of use or file additional extension requests as they become due during the pendency of a petition.
If the applicant fails to file a statement of use or further request(s) for extension of time to file the statement of use while the petition is pending, the USPTO will give the applicant an opportunity to perfect the petition by paying the fees for each missed extension request and filing a copy of the last extension request, or statement of use, that should have been filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762 (Comm’r Pats. 1997).
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c). If the applicant did not receive the notice of allowance, the petition must include the following:
(1) The petition fee required by 37 C.F.R. §2.6; and
(2) A statement, signed by someone with firsthand knowledge of the facts, that the applicant did not receive the notice of allowance, and that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional. The statement does not have to be verified.
If the applicant did not receive the notice of allowance, it is not necessary to file a statement of use or request for an extension of time to file a statement of use, or the fees for the number of extension requests that would have been due if the application had never been abandoned. 37 C.F.R. §§2.66(c)(3) and (4). If the petitioner files an extension request with a petition that alleges nonreceipt of the notice of allowance, the USPTO will cancel the notice of allowance, refund the filing fee for the extension request, and forward the file to the Office of Trademark Program Control to reissue the notice of allowance.
If the petitioner files a statement of use with a petition that alleges nonreceipt of the notice of allowance, the USPTO will give the petitioner the option of: (1) having the notice of allowance cancelled and reissued, and the filing fee for the statement of use refunded; or (2) paying the additional filing fees for the extension requests that would have been due if the application had never been abandoned, so that the statement of use can be processed.
Under 37 C.F.R. §2.66(a), a petition to revive an abandoned application must be filed: (1) within two months of the mailing date of the notice of abandonment; or (2) within two months of actual knowledge of the abandonment, if the applicant did not receive the notice of abandonment, and the applicant was diligent in checking the status of the application. See TMEP §1705.04 regarding petition timeliness, and TMEP §1705.05 regarding an applicant’s duty to exercise due diligence in monitoring the status of an application. If a petition is untimely, or if the applicant was not diligent, the USPTO will deny the petition and refund the petition fee. To be considered diligent, the applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. §§2.66(a)(2) and 2.146(i)(1).
The applicant may file a petition to revive before the applicant receives the notice of abandonment.
Under 37 C.F.R. §§2.66(b)(2) and (c)(2), a petition to revive must include a statement, signed by someone with firsthand knowledge of the facts, that the delay in responding to the Office action or notice of allowance was unintentional. This statement does not have to be verified.
Except when alleging non-receipt of an Office action or notice of allowance, it is not necessary to explain the circumstances that caused the unintentional delay. If the applicant did not receive the Office action or notice of allowance, this should be stated; no further explanation is necessary.
The USPTO will generally not question the applicant’s assertion that the delay in responding to an Office action or notice of allowance was unintentional, unless there is information in the record indicating that the delay was in fact intentional. An example of an intentional delay is when an applicant intentionally decides not to file a response or intent-to-use document because it no longer wishes to pursue registration of the mark, but later changes its mind and decides that it does wish to pursue registration.
The person signing the statement must have firsthand knowledge of the facts, but it is not necessary to specifically state in the petition that the signatory has first hand knowledge. Generally, the Office will not question the signatory’s authority to sign the statement. However, any response to an Office action accompanying the petition must be signed by a practitioner authorized to practice before the Office pursuant to 37 C.F.R. §10.14 (see TMEP §§602 et seq.), or by someone with legal authority to bind the applicant if the applicant is not represented by an authorized practitioner. See TMEP §§712 et seq. regarding signature of responses to Office actions, and TMEP §1705.07 regarding signature of petitions.
See TMEP §804.05 regarding acceptable formats for signature of documents filed through TEAS.
Trademark Rule 2.66 applies only to the “failure” to respond to an Office action or notice of allowance. This includes the failure to meet minimum filing requirements for a statement of use or request for an extension of time to file a statement of use.
The minimum filing requirements for a statement of use are listed in 37 C.F.R. §2.88(e): (1) the fee for at least a single class of goods or services; (2) at least one specimen or facsimile of the mark as used in commerce; and (3) a verification or declaration signed by the applicant stating that the mark is in use in commerce.
The minimum filing requirements for a request for extension of time to file a statement of use are: (1) a verified statement that the applicant has a continued bona fide intention to use the mark in commerce; (2) a specification of the goods or services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. In re El Taurino Restaurant, Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996).
An applicant who fails to meet the minimum filing requirements for a statement of use or request for an extension of time to file a statement of use has, in effect, not filed the statement of use or extension request. Therefore, if the failure to meet the minimum filing requirements was unintentional, the applicant may file a petition to revive under 15 U.S.C. §1051(d)(4) and 37 C.F.R. §2.66.
An applicant may also file a petition to revive under 37 C.F.R. §2.66 if the applicant timely files a notice of appeal from an examining attorney’s final refusal, but unintentionally fails to include the appeal fee required by 15 U.S.C. §1070.
Examining Attorney’s Holding of Abandonment for Failure to File Complete Response to Office Action - 37 C.F.R. §2.65(a)
The unintentional delay standard of 37 C.F.R. §2.66 does not apply to an incomplete response to an examining attorney’s Office action. Incomplete responses to examining attorneys’ Office actions are governed by 37 C.F.R. §2.65(b), which gives the examining attorney discretion to grant an applicant additional time to respond if the applicant’s failure to file a complete response is inadvertent. If the examining attorney holds the application abandoned for failure to file a complete response to an Office action, the applicant may file a petition to the Director to review the examining attorney’s action under 37 C.F.R. §2.146. The Director will reverse the examining attorney’s action only if there is clear error or abuse of discretion. See TMEP §1713.
A request for reconsideration of a final refusal (see TMEP §§715.03 et seq.) that is not accompanied by a proper notice of appeal will be treated as an incomplete response to the final Office action. If the examining attorney denies the request for reconsideration, the time for appeal runs from the mailing date of the final action. TMEP §715.03(c). If the time for appeal has expired, the applicant may not file a petition to revive under 37 C.F.R. §2.66.
Examining Attorney’s Refusal of Registration on Ground That Applicant Did Not Meet Statutory Requirements Before Expiration of Deadline For Filing Statement of Use
If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use, as set forth in 37 C.F.R. §2.88(e), the applicant may file a petition to revive under 37 C.F.R. §2.66. However, the applicant may not file a petition to revive under 37 C.F.R. §2.66 if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(e), but the examining attorney later refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use (15 U.S.C. §1051(d); 37 C.F.R. §2.88(b)) on or before the statutory deadline (e.g., because the specimen is unacceptable, the dates of use are subsequent to the deadline for filing the statement of use, or the statement of use was not filed in the name of the owner of the mark). The applicant may appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board. See TMEP §1109.16(a) regarding the requirements that must be met within the statutory period for filing the statement of use.
Goods/Services Omitted from Request for an Extension of Time to File a Statement of Use
If the applicant lists the goods/services in a request for an extension of time, and omits any goods or services that were listed in the notice of allowance, the Office will presume these goods/services to be deleted. The applicant may not thereafter request that the goods/services be reinserted in the application. 37 C.F.R. §2.89(f); TEMP §1108.02(d). In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66 claiming unintentional delay in filing an extension request for the omitted items.
Registered Marks
Trademark Rule 2.66 applies only to abandoned applications, not to registered marks. If a registrant fails to timely respond to an Office action regarding an affidavit or declaration of use or excusable nonuse under 15 U.S.C. §1058 or §1141k, or a renewal application under 15 U.S.C. §1059, the registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive a rule and accept a late response. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. The Director has no authority to waive a statutory requirement. See TMEP §1708 regarding the waiver of rules.
See TMEP §1712.02 regarding requests to reinstate cancelled or expired registrations.
Dismissal of Appeal for Failure to File a Brief
An applicant cannot file a petition to revive under 37 C.F.R. §2.66 if an application is abandoned because the Board dismisses an appeal for failure to file a brief. In this situation, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief. See TBMP §1203.02(a). If the Board denies this motion, the applicant may file a petition to the Director under 37 C.F.R. §2.146, asking the Director to reverse the Board’s order. The petition must be filed within thirty days of the mailing date of the Board’s order. 37 C.F.R. §2.146(e)(2). The Director will reverse the Board’s action only if the Board clearly erred or abused its discretion.
Under 37 C.F.R. §2.66(f), if a petition to revive is denied, the applicant may request reconsideration by: (1) filing the request for reconsideration within two months of the mailing date of the decision denying the petition; and (2) paying a second petition fee under 37 C.F.R. §2.6. See TMEP §1705.08.
Protests from third parties who object to the registration of marks in pending applications must be sent in writing to the Office of the Commissioner for Trademarks. The Administrator for Trademark Identifications, Classification and Practice (“Administrator”) will determine whether the information should or should not be given to the examining attorney for consideration. Third parties may not contact an examining attorney directly, either orally or in writing, regarding a particular application. If a third party attempts to contact an examining attorney, the examining attorney should refer the third party to the Office of the Commissioner for Trademarks. If an examining attorney receives a letter of protest without any indication that it has been granted by the Administrator, the letter should be referred to the Administrator for consideration. If the letter of protest was mistakenly entered in the record as a paper received from the applicant, all evidence of that receipt should be expunged from the records of the USPTO.
The purpose of a letter of protest is to permit third parties to bring facts relevant to the registrability of the mark to the attention of the USPTO. The procedure is intended to achieve this objective without causing undue delay in the examination process and without compromising the objectivity or the ex parte character of the examination process. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988). The letter of protest must contain factual, objective evidence.
The Administrator will grant a letter of protest only if the protestor submits prima facie evidence supporting a refusal of registration, such that publication of the mark without consideration of the issue and evidence presented in the letter of protest was or would be a clear error by the USPTO. See TMEP §§1715.02 and 1715.03.
When a protest is granted, the actual letter of protest is not made part of the record, or forwarded to the examining attorney or the applicant. The examining attorney receives a form letter from the Administrator indicating that a letter of protest was filed and briefly indicating the nature of the protest, with the factual evidence filed with the letter of protest attached.
Letters of protest sent via the U.S. Postal Service first-class mail to the Office of the Commissioner for Trademarks should be addressed to:
Letter of Protest
ATTN: Trademark Administrator
600 Dulany Street
MDE-4B89
Alexandria, VA 22314-5793
Submissions relating to a Letter of Protest, including requests for copies of letters of protest, should not be transmitted via facsimile.
It is inappropriate to use the letter of protest procedure to delay registration or to present purely adversarial arguments. The USPTO denies letters of protest that are merely adversarial arguments that registration should be refused. Adversarial arguments in letters of protest are not sent to the examining attorney. These objections to registration should be made in an opposition proceeding after publication or, in the case of the Supplemental Register, a cancellation proceeding after registration. The letter of protest procedure may not be used to circumvent the requirements for filing an opposition.
Appropriate subjects for letters of protest are those that the examining attorney has the authority and resources to pursue to a legal conclusion without the need of further intervention by third parties. The following are examples of three of the most common areas of protest:
(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness. The evidence should be objective, independent, factual evidence that the examining attorney can use to support the suggested refusal. Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney. If the protest is granted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or descriptive, and is given a copy of any factual evidence submitted with the letter of protest.
(2) A third party notifies the USPTO of the existence of a federally registered mark or prior-pending application and alleges that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. If the protest is granted, the examining attorney is notified that an objection to the registration of the mark has been made on the ground of an alleged likelihood of confusion with a registered mark or prior-pending application, and is referred to the registration or application information as it appears in the automated records of the USPTO.
(3) A third party files a request that prosecution of an application be suspended because of pending litigation that is relevant to the registrability of the mark. The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed. The litigation must involve a federally registered mark or prior-pending application of the protestor and grounds that are clearly relevant to the right of the applicant to register the mark in the application that is the subject of the letter of protest. If the protest is granted, the examining attorney is informed that a request for suspension has been received based on the existence of pending litigation. Copies of the relevant pleadings are placed in the record.
To preserve the integrity and objectivity of the ex parte examination process, the Administrator will consider and act on the letter of protest without consulting with the examining attorney. The Administrator considers only the record in the application and the protester’s submissions. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988).
The following are examples of issues that are not appropriate to raise in a letter of protest:
(1) A third party claims earlier common law use of a trademark but does not have a federal registration or previously filed pending application for that mark. The examining attorney can only consider registrations and prior-pending applications when determining likelihood of confusion. Earlier common law use, state registrations and other claims based on evidence other than federal registrations and prior-pending applications for federal registration are not appropriate for presentation to examining attorneys during ex parte examination.
(2) A third party claims that the applicant is not the proper owner of the mark. This issue requires proof that is beyond the scope of authority of an examining attorney to require during ex parte examination. In re Apple Computer, Inc., 57 USPQ2d 1823 (Comm'r Pats. 1998).
(3) Numerous third parties set forth the opinion that the mark should not register but do not offer any evidence or legal reason to support the refusal. The trademark registration process is governed by statutory laws and federal regulations. Public opinion cannot be used to influence the application process; therefore, mass mailings by special interest groups will not be made part of the record.
If a letter of protest is filed before the mark is published for opposition, the Administrator will determine whether the letter contains sufficient evidence to establish a prima facie case that supports a refusal of registration. If the Administrator determines that publication of the mark for opposition without consideration of the issue and evidence presented in the letter of protest might result in a clear error by the USPTO, the Administrator will grant the protest and forward the evidence in the letter of protest to the examining attorney in the manner described in TMEP §1715. The examining attorney should: issue any refusal or requirement supported by the evidence; notify the applicant that a letter of protest was filed; and provide the applicant with a copy of the information that has been made a part of the record. See notice at 1172 TMOG 93 (March 28, 1995).
The Administrator will act on the letter of protest even if an examining attorney has not yet taken a first action in the application that is the subject matter of the protest.
When a letter of protest is filed after publication, the Administrator will first determine whether the letter is timely, i.e., whether it was filed within 30 days of the date of publication. If not, the letter of protest will generally be denied. See TMEP §1715.03(a).
When a letter of protest is filed within 30 days after the date of publication, the Administrator will make an initial determination of whether publication of the mark constituted clear error, i.e., whether the protester presents prima facie evidence that supports a refusal of registration. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988).
If the letter of protest concerns a mark in an intent-to-use application that has been published for opposition, but no notice of allowance has issued, the examining attorney does not have jurisdiction to consider the information in the letter of protest. Therefore, if the Administrator determines that the letter of protest should be granted, the Administrator will submit a formal request to the Commissioner for Trademarks to restore jurisdiction of the application to the examining attorney. The Administrator will include copies of the relevant evidence with this request. If the Commissioner agrees that the letter of protest should be granted and restores jurisdiction to the examining attorney, the Administrator will grant the protest and refer the application with the relevant evidence to the examining attorney. If the Commissioner does not agree that the letter of protest should be granted, the Administrator will deny the letter of protest.
If a notice of allowance has issued in an application based on 15 U.S.C. §1051(b), the examining attorney has jurisdiction over the application, so a formal restoration of jurisdiction is unnecessary.
The most appropriate time for filing a letter of protest is before publication of a mark, because the purpose of the letter of protest is to assist the USPTO in the examination of applications. However, circumstances may preclude filing during that period in certain cases. For example, the protester may not be aware of an application until publication, or the evidence relevant to registrability may not be available until after publication.
Letters of protest filed more than 30 days after publication are generally denied as untimely, because a letter of protest filed after publication may delay the registration process significantly. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988). This applies to all applications, including intent-to-use applications under 15 U.S.C. §1051(b). In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476 (Comm’r Pats. 1994).
Exceptions to the 30-day rule are made only in special circumstances, where the protestor could not earlier have obtained the information provided in the letter. In re Pohn, 3 USPQ2d 1700 (Comm’r Pats. 1987).
Filing a request for extension of time to oppose does not extend the 30-day deadline for filing a letter of protest.
The letter of protest procedure applies only to pending applications. The Director has no authority to cancel a registration in order to consider a letter of protest. Therefore, a letter of protest will be denied as untimely if the mark registers before issuance of the decision on the letter.
Filing a letter of protest does not stay or extend the opposition period. Therefore, a party who files a letter of protest after publication should also file a timely request(s) for extension of time to oppose (15 U.S.C. §1063) with the Trademark Trial and Appeal Board. See TBMP §215 for further information. The Board will not suspend a potential opposer’s time to file a notice of opposition because a letter of protest has been filed. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).
A protestor will always receive a response from the Administrator either granting or denying the letter of protest. Generally, the Administrator will make every effort to respond to letters of protest within sixty days of the time they are received in the Office of the Commissioner for Trademarks. If a protestor has not received a response from the Administrator within six months of submitting a letter of protest, the protestor should contact the Office of the Commissioner for Trademarks to make sure the letter of protest has been received in that Office. The protestor can check the TARR database at http://tarr.uspto.gov to determine whether an action has been taken.
If the Administrator grants a letter of protest, the examining attorney will issue a requirement or refusal consistent with the Administrator’s action, except in unusual circumstances. However, granting a letter of protest does not constitute a binding determination by the Administrator as to the merits. In some circumstances, the examining attorney may discover additional evidence that would justify approval of the application after the grant of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement. If the Administrator grants a letter of protest and the examining attorney later determines that the mark should be approved for publication, republication or issue, the Administrator must approve the examining attorney’s approval of the application for publication, republication or issue. Due to the possibility that the application may be approved for publication, republication or issue, protestors should continue to monitor the status of the application being protested so that they may take appropriate action (such as filing a notice of opposition) if the refusal or requirement raised as a result of the letter of protest is successfully overcome by the applicant.
If the Administrator denies a letter of protest, the protester may pursue remedies otherwise available, such as an opposition proceeding, if the protester complies with all relevant requirements and deadlines. Filing a letter of protest does not stay or extend the time for filing a notice of opposition. TMEP §1715.03(b).
The protester may not file a request for reconsideration of the denial of the letter of protest with the Administrator, because the request would unduly delay final disposition of the application. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988). However, the protester may petition the Director to review the Administrator’s decision to deny the letter of protest under 37 C.F.R. §2.146(a)(3).
The Administrator has broad discretion in determining whether to grant a letter of protest. In any petition to review the denial of a letter of protest, the Administrator’s action will be reversed only where there has been a clear error or abuse of this broad discretion. In re Pohn, 3 USPQ2d 1700 (Comm’r Pats. 1987).
The protester may not present additional evidence with the petition. On petition, the Director will consider only the evidence that was properly before the Administrator in acting on the letter of protest. In re BPJ Enterprises, supra.
Any party who requests a copy of a letter of protest should mail the request to the Office of the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451. All requests should be directed to the attention of the Administrator for Trademark Identifications, Classification and Practice. Upon review of the letter of protest material, the Administrator will usually forward a copy of the letter of protest and its attachment to the requester. The Administrator will deny the request for a copy of the letter of protest only if the letter of protest or its attachments contain material that would potentially be exempt from disclosure under the Freedom of Information Act (“FOIA”). If, in the opinion of the Administrator, any part of the letter of protest materials should be exempt from disclosure under FOIA, the matter will be forwarded to the Office of General Counsel of the USPTO for further review.
Call the Trademark Assistance Center at 800.786.9199 for help on trademark matters. Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov. While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website. |
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