Changes To Requirements For Petitions To The
Commissioner In Trademark Cases
Effective Date: October 30, 1999
This notices discusses changes to the requirements for filing petitions
to revive under Trademark Rule 2.66, 37 C.F.R. 2.66, and petitions to
the Commissioner under Trademark Rule 2.146, 37 C.F.R. 2.146,
effective October 30, 1999.
Contents
I. Petitions to Revive Abandoned Applications
A. Requirements for Petitions to Revive
B. Where the Unintentional Delay Standard Applies
C. Where the Unintentional Delay Standard Does Not
Apply
II. Deadlines for Filing Petitions
III. Due Diligence
IV. Requests for Reconsideration
I. PETITIONS TO REVIVE ABANDONED APPLICATIONS
Effective October 30, 1999, 1(d)(4) and 12(b) of the Trademark Act,
15 U.S.C. 1051(d)(4) and 1062(b), and Trademark Rule 2.66, 37 C.F.R.
2.66, provide for revival of an abandoned application where the delay
in responding to an Office action or notice of allowance was
unintentional. A showing of "unavoidable delay" is no longer required.
All petitions to revive that are pending or filed on or after October
30, 1999, will be reviewed under the unintentional delay standard.
A. Requirements for Petitions to Revive
1. Requirements for Petition to Revive Application Abandoned for Failure
to Timely Respond to Examining Attorney's Office Action
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;
(3) Unless the applicant alleges that it did not receive the Office
action, the applicant's proposed response to the Office action. The
response should be on a separate paper from the petition.
2. Requirements for Petition to Revive Application Abandoned for Failure
to File a Statement of Use - Notice of Allowance Received
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;
(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; and
(4) 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 37
C.F.R. 2.89 if the application had never been abandoned.
Example: For example, if a notice of allowance was issued June 14, 1998,
and a petition to revive was filed August 1, 1999, the petition should
be accompanied by: (a) either a statement of use or request for an
extension of time to file a statement of use, together with the required
filing fee; and (b) the fees for the extension requests due December 14,
1998 and June 14, 1999 (unless those fees had been previously paid).
These fees are in addition to the petition fee.
The Office will not grant a petition to revive an
intent-to-use application if the grant of the petition would extend the
deadline for filing the statement of use beyond thirty-six months after
issuance of the notice of allowance. 15 U.S.C. 1051(d)(2); 37 C.F.R.
2.66(d).
Filing a petition to revive does not stay the time for filing a
statement of use or further extension request. When a petition is
granted, the term of the requested six-month extension that was the
subject of the petition runs from the expiration date of the previously
existing six-month period for filing a statement of use. Thus, unless a
statement of use is filed with or before the petition, the applicant
must continue to file extension requests as they become due during the
pendency of a petition. 37 C.F.R. 2.66(c)(5) and 2.89(g).If the
petition is denied, the fees for the extension requests filed during the
pendency of the petition will be refunded.
If the applicant fails to file a statement of use, or further request(s)
for extension(s) of time to file a statement of use while the petition
is pending, the applicant will be given 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).
3. Requirements for Petition to Revive Application Abandoned for Failure
to File a Statement of Use - Notice of Allowance Not Received
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;
If the applicant does 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 requests for
extensions of time to file a statement of use 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 Office will
cancel the notice of allowance, refund the filing fee for the extension
request, and forward the file to the Publication and Issue Section of
the Office 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 Office will give the
petitioner the option of (a) having the notice of allowance cancelled
and reissued, and the filing fee for the statement of use refunded; or
(b) paying the additional filing fees for the extension requests that
would have been due if the application had never been abandoned.
4. Establishing Unintentional Delay
Trademark Rules 2.66(b)(2) and (c)(2), 37 C.F.R. 2.66(b)(2) and
(c)(2), require that a petition to revive 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 need not be verified. Generally, the
Office will not question the authority of the person signing the
statement.
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. The Office will generally not question the
applicant's assertion that the delay in responding to an Office action
or notice of allowance was unintentional, and will grant the petition,
unless there is information in the record indicating that the delay was
in fact intentional. An example of intentional delay is if an applicant
intentionally decides to refrain from filing a response or intent-to-use
document because it no longer wants to pursue registration of the mark,
only to later decide that it does.
B. Where the Unintentional Delay Standard Applies
Trademark Rule 2.66 applies only to the "failure" to respond to an
Office action or notice of allowance, including 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 set forth in
Trademark Rule 2.88(e), 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 Trademark Rule 2.66. (Note: If a statement of use is timely
filed and meets the minimum filing requirements that a statement of use
must meet before it can be sent to an examining attorney for examination
under Trademark Rule 2.88(e), Trademark Rule 2.66 does not apply.
Therefore, Trademark Rule 2.66 does not apply to an application
abandoned due to an examining attorney's refusal of registration on the
ground that the applicant did not meet statutory requirements before
expiration of the time for filing the statement of use (e.g., because
the specimen(s) is unacceptable or the statement of use was not filed by
the owner - see TMEP 1105.05(f)(i)(A)). The applicant may appeal the
examining attorney's refusal of registration to the Trademark Trial and
Appeal Board.)
An applicant may also file a petition to revive under Trademark Rule
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 20 of the Act, 15 U.S.C. 1070.
C. Where the Unintentional Delay Standard Does Not Apply
1. Examining Attorney's Holding of Abandonment for Failure to File
Complete Response to Office Action
Trademark Rule 2.66 does not apply to the unintentional filing of an
incomplete response to an examining attorney's Office action. Incomplete
responses to examining attorneys' Office actions are provided for by
Trademark Rule 2.65(b), 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 Commissioner to review the examining attorney's action
under Trademark Rule 2.146, 37 C.F.R. 2.146. These petitions are
decided using a clear error standard of review. TMEP 1112.05; In re
GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994); In re
Legendary, Inc., 26 USPQ2d 1479 (Comm'r Pats. 1992).
2. Registered Marks
Trademark Rule 2.66 applies only to abandoned applications. The
unintentional delay standard does not apply to an unintentional failure
to respond to an Office action relating to an affidavit or declaration
of continued use or excusable nonuse under 8 of the Trademark Act, 15
U.S.C. 1058, or a renewal application under 9 of the Act, 15 U.S.C.
1059. In these situations, the registrant may file a petition to the
Commissioner under Trademark Rules 2.146(a)(3) and 2.146(a)(5), 37
C.F.R. 2.146(a)(3) and 2.146(a)(5).
II. DEADLINES FOR FILING PETITIONS
Trademark Rule 2.66(a), 37 C.F.R. 2.66(a), requires that a petition to
revive an abandoned application 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.
Trademark Rule 2.146(d), 37 C.F.R. 2.146(d), is amended to set a
two-month time limit for filing a petition to the Commissioner on a
matter if no deadline is set forth elsewhere in the rules for that type
of petition. Previously the deadline for filing these petitions was
sixty days.
Trademark Rule 2.89(g), 37 C.F.R. 2.89(g), is amended to change the
deadline for filing a petition from the denial of a request for an
extension of time to file a statement of use from one month to two
months from the mailing date of the denial of the request.
These deadlines will be strictly enforced.
III. DUE DILIGENCE
Trademark Rules 2.66(a)(2) and 2.146(i), 37 C.F.R. 2.66(a)(2) and
2.146(i), require that the applicant/registrant monitor the status of
its pending file. If the applicant does not receive the notice of
abandonment or the registrant does not receive the notice of
cancellation or expiration, the petitioner must show that it diligently
monitored the status. To be considered diligent, a party must inquire
within one year of the filing or receipt of a paper for which further
action by the Office is expected. This codifies the longstanding past
practice of the Office. TMEP 413 and 1704. Even where a petitioner
can swear that papers were mailed, or that a notice from the Office was
never received by the petitioner, the Office will deny the petition if
the petitioner waited too long before investigating the problem. The
rationale is that granting the petition would be unfair to third parties
who may have searched Office records and relied to their detriment on
information that an application was abandoned or that a registration was
cancelled. If the petitioner did receive the abandonment notice or post
registration notification, a showing of due diligence is not required.
Only the question of timeliness will be addressed.
A party can check the status of an application or registration through
the Trademark Status Line ((703)-305-8747), or through the Trademark
Applications and Registrations Retrieval (TARR) database on the Office's
World Wide Web site at http://www.uspto.gov/go/tarr/. The party should
keep notes in the party's own file as to the dates of the status
inquiries and the substance of the information learned. No further
documentation is required. Written status inquiries are discouraged.
IV. REQUESTS FOR RECONSIDERATION
Effective October 30, 1999, Trademark Rules 2.66(f) and 2.146(j), 37
C.F.R. 2.66(f)(3) and 2.146(j), are amended to provide for requests
for reconsideration of the denial of a petition to revive under
Trademark Rule 2.66, or a petition to the Commissioner under Trademark
Rule 2.146, upon payment of a second petition fee under Trademark Rule
2.6. A second petition fee will be required for any request for
reconsideration reviewed on or after October 30, 1999.
A request for reconsideration must be filed within two months of the
mailing date of the decision denying the petition.
If the petitioner presents new facts that warrant equitable relief, or
there is a new standard of review for the petition, the Office may grant
the petition upon request for reconsideration. However, the Office will
generally deny the petition if the request for reconsideration merely
reiterates or expands on arguments previously presented.
Since contested matters must be brought to a conclusion within a
reasonable time, the Office will grant a petition upon a second request
for reconsideration only in those rare situations where the petitioner
presents significant facts or evidence that was not previously
available. In re American National Bank and Trust Company of Chicago, 33
USPQ2d 1535 (Comm'r Pats. 1993).
October 7, 1999 ROBERT M. ANDERSON
Acting Assistant Commissioner
for Trademarks