(210) Responsibility to Diligently Monitor
Trademark Applications and Registrations
The purpose of this notice is to remind trademark applicants and
registrants of their responsibility to monitor the status of their
application or registration in cases where a notice or action from the
PTO is expected; and to apprise these parties that the Trademark Manual
of Examining Procedure, (TMEP), will be revised to indicate that
inquiries regarding the status of pending matters should be made within
six months of the filing or receipt of any document for which further
action by the Office is expected.
The TMEP is under revision in its entirety. As a part of that
revision, Section 411, entitled "Status Inquiries," will be amended. The
current language of 411 indicates that a party awaiting action by the
Office should file a status inquiry within eighteen months from the
filing date of the application, or from the filing of a response to an
Office action. This eighteen-month period was based on Office pendency
in 1971, which was approximately fourteen months to mailing of the first
Office action. Currently, the Office is mailing first actions within
three months. Accordingly, the eighteen month period is no longer
appropriate and is being reduced to six months to more realistically
reflect Office pendency. Adoption of a six-month due diligence standard
may have implications with respect to filing petitions and requests for
other relief.
The Office of the Assistant Commissioner for Trademarks receives a
number of requests to reactivate applications and registrations
occasioned by the loss of papers mailed to or from the PTO. In many of
these cases, the applicant or registrant may have proof that papers
mailed to the PTO were actually received, or can aver that notices sent
from the PTO were never received. However, in some of these cases the
request will be denied because the party seeking relief has waited too
long before investigating the problem. The rationale for denial is that
third parties may have relied to their detriment on the information
available in the PTO files and databases that an application was
abandoned or that a registration has been cancelled or expired.
The PTO generally processes applications, responses and other papers
in the order in which they are received in the Office. Accordingly,
applicants and registrations can expect to receive notice concerning
these filings within predictable time periods. For example, a party
filing an application for registration should expect to receive a filing
receipt within four to six weeks and, in most cases, a "first action"
within four to five months of the date of filing. Similarly, a
registrant should expect to receive a notice of acceptance or rejection
of a Section 8 affidavit of use or excusable nonuse within four to five
months of submission, and a notice of acceptance or rejection of a
renewal application within two to three months of submission. Only in
rare cases would any of these time periods be longer than six months.
Since it is reasonable to expect some notice from the PTO about a
pending matter within six months of the filing or receipt of any
document, a party who has not received the expected written action or
telephone call from the PTO within that time frame should be put on
notice that the filing may have become lost. The party awaiting
notification has the burden of inquiring as to the cause of the delay.
In order to be considered diligent in the monitoring of its application
or registration, the party expecting notification from the PTO should
inquire within six months. Waiting until the end of the six-month period
is not recommended. Parties should inquire as soon as they suspect that
a problem exists.
Written status inquiries are discouraged. Whenever possible, status
inquiries should be made by calling the Trademark Status Line, at (703)
305-8747 through 8752. The Status Line provides the current status and
status date of all active federal applications and registrations, and is
available from 6:30 a.m. until midnight, Eastern Time, Monday through
Friday.
Examples of Situations Requiring Diligent Action
Applicant/registrant files an application, Section 8 affidavit, or
Section 9 renewal application, accompanied by an acknowledgment postcard:
(a) No acknowledgement postcard, filing receipt or other
acknowledgment is received within a reasonable time.
Diligent Action: Inquire within six months of mailing of the document to
PTO.
(b) Acknowledgement post card received but no filing receipt or other
acknowledgment is received within a reasonable time.
Diligent Action: Inquire within six months of receipt of the
acknowledgement postcard.
(c) A filing receipt for the application is received but no Office
action, telephone call from the examining attorney, or notice of
publication is received within a reasonable time.
Diligent Action: Inquire within six months of receipt of the filing
receipt.
(d) A response to an Office action is mailed to the PTO but no
further Office action, telephone call, notice of publication, or other
acknowledgment is received within a reasonable time.
Diligent Action: Inquire within six months of mailing of the response.
(e) A notice of publication is received for an application under
Section 1(b), 15 U.S.C. 1051(b) but no Notice of Allowance or
notification of potential opposition is received within a reasonable
time.
Diligent Action: Inquire within a six months of receipt of the notice of
publication.
In the event that the party discovers that its application or
registration is no longer active, or that a required paper has not been
received by the PTO, the applicant or registrant should promptly file a
petition to the Commissioner or take other appropriate action to rectify
the situation. The time limits for filing petitions are strictly
applied. A certificate of mailing in accordance with Trademark Rules 1.8
or 1.10, 37 C.F.R. 1.8 or 1.10, is recommended.
To summarize, applicants and registrants have a duty to monitor the
status of their applications and registrations. If nothing has been
heard from the PTO within a six month period, the party awaiting
notification has the burden of inquiring as to the status. Status
inquiries should be made via the Trademark Status Line. Should the
status inquiry reveal that the relevant document is lost, or some other
problem exists, a petition to the Commissioner or other required action
should be filed within 60 days. Trademark Rule 2.146(d), 37 C.F.R.
2.146(d). Failure to act diligently and follow up with the appropriate
action may result in denial of the requested relief.
Oct. 2, 1992 JEFFREY M. SAMUELS
Assistant Commissioner
for Trademarks
[1143 TMOG 73]