TMEP / Petitions, Requests for Reinstatement, and Other Matters Submitted to Director

Chapter 1700 Petitions, Requests for Reinstatement, and Other Matters Submitted to Director

Petitions, Requests for Reinstatement, and Other Matters Submitted to Director
1701 Statutory Authority of Director

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).   SeeTMEP §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.  1051et 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.

Under15 U.S.C. §1123  and35 U.S.C. §2(b)(2),  the Director may establish regulations for the conduct of proceedings in the USPTO.

Citation to decisions issued by the Director on petition on or after March 29, 2000 must include a parenthetical reference to “(Dir USPTO <specify year>).”  Citation to decisions issued by the Commissioner for Patents and Trademarks prior to March 29, 2000 must reference “(Comm’r Pats. <specify year>).”

SeeTMEP §1709 regarding delegation of the Director’s authority.

1702 Petitions to the Director Under37 C.F.R. §2.146 - In General

37 C.F.R.  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(a) and (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 requested, and the fee required by § 2.6. Any brief in support of the petition shall be embodied in or accompany the petition. The petition must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(5). When facts are to be proved on petition, the petitioner must submit proof in the form of verified statements signed by someone with firsthand knowledge of the facts to be proved, and any exhibits.
  • (d) A petition must be filed within two months of the date of issuance of the action from which relief is requested, unless a different deadline is specified elsewhere in this chapter, and no later than two months from the date when Office records are updated to show that the registration has been cancelled or has expired.
  • (e)(1) A petition from the grant or denial of a request for an extension of time to file a notice of opposition must be filed within fifteen days from the date of issuance of the grant or denial of the request.  A petition from the grant of a request must 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 must be served on the attorney or other authorized representative of the applicant, if any, or on the applicant.  Proof of service of the petition must be made as provided by §2.119.  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 must serve a copy of the response on the petitioner, with proof of service as provided by §2.119.  No further document relating to the petition may be filed.
  • (2) A petition from an interlocutory order of the Trademark Trial and Appeal Board must be filed within thirty days after the date of issuance of the order from which relief is requested.  Any brief in response to the petition must be filed, with any supporting exhibits, within fifteen days from the date of service of the petition.  Petitions and responses to petitions, and any documents accompanying a petition or response under this subsection must be served on every adverse party pursuant to §2.119.
  • (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(a) and (b) and 2.65(a) 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 documents 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 date of issuance 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 (“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. Parts 2, 3, 6, and 7) because of an extraordinary situation, may seek equitable relief by filing a petition under37 C.F.R. §2.146.

Under37 C.F.R. §2.146(a)(1), an applicant may file a petition to review an examining attorney’s formal requirement if permitted by37 C.F.R. §§2.63(a) and(b).  Under37 C.F.R. §2.63(a)(2), a petition from a requirement that is repeated but not made final is permitted if a non-final action contains no substantive refusals and the subject matter of the requirement is appropriate for petition.  Under37 C.F.R. §2.63(b)(2), a petition from a final requirement is permitted if a final action contains no substantive refusals and the subject matter of the requirement is procedural, and therefore appropriate for petition.  SeeTMEP §1704 regarding petitionable subject matter.  If a petition under37 C.F.R. §2.146(a)(1) is denied, the applicant has six months from the issuance 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(c).

Under37 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 the Post Registration staff under15 U.S.C. §§10571058,1059, and1141k.

Under35 U.S.C. §2  and37 C.F.R. §2.146(a)(3), the Director may invoke supervisory authority in appropriate circumstances.  SeeTMEP §1707.

Under37 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.  SeeTMEP §1708.

SeeTMEP §1703 for a list of issues that often arise on petition, andTMEP §§1705–1705.09regarding petition procedure.

1703 Specific Types of Petitions  

A variety of issues may be reviewed on petition.  The following is a list of issues that commonly arise:

Petitions to Restore an Application Filing Date.  SeeTMEP §1711.

Petitions to Make Special.  SeeTMEP §1710.

Petitions to Reverse an Examining Attorney’s Holding of Abandonment for Failure to File a Complete Response to an Office Action are reviewed under37 C.F.R. §2.146(a)(3).  SeeTMEP §1713.

Petitions to Revive an Application Abandoned Due to Unintentional Delay in Responding to an Office Action or Notice of Allowance are considered under37 C.F.R. §2.66.  SeeTMEP §§1714–1714.01(g).

Petitions to Restore Jurisdiction to the Examining Attorney may be filed by the applicant under37 C.F.R. §2.84, when the examining attorney does not have jurisdiction to review an amendment to the application.  SeeTMEP §§1504–1504.05.

Petitions to Review the Action of an Examining Attorney.  A petition to review an examining attorney’s formal requirement may be filed under37 C.F.R. §§2.63(a) and(b) and 2.146(a)(1), if the requirement is repeated or made final and the subject matter is appropriate for petition.  SeeTMEP §1704 regarding petitionable subject matter, andTMEP §1706 regarding the standard of review.

Petitions to Review the Action of the Post Registration Staff may be filed if an affidavit of use or excusable nonuse is refused under15 U.S.C. §1058  or§1141k, a renewal application is refused under15 U.S.C. §1059,  or a proposed amendment or correction is refused under15 U.S.C. §1057.   See37 C.F.R. §§2.165,2.176,2.186;TMEP §§1604.18,1606.14,1613.18.

Petitions to Review the Refusal of the Madrid Processing Unit to Certify an Application for International Registration are reviewed under37 C.F.R. §2.146(a)(3).  SeeTMEP §1902.03(a).

Petitions to Reverse a Nonfinal 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 Enters., Inc. v. Lindsley, 198 USPQ 480 (Comm’r Pats. 1977).  SeeTrademark Trial and Appeal Board Manual of Procedure (“TBMP”) §§901.02(a),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 applied37 C.F.R. §§2.101 and2.102.

Petitions to Add or Substitute a Basis After Publication are reviewed under37 C.F.R. §2.146(a)(2).  See37 C.F.R. §2.35(b)(2);TMEP §§806.03(j)-806.03(j)(iii).

Petitions to Abandon an Affidavit or Declaration of Incontestability Under §15 of the Trademark Act,15 U.S.C.  §1065, are reviewed under37 C.F.R. §2.146(a)(3).See37 C.F.R. §2.167(j);TMEP §§1605,1605.03,1704,1707.

Petitions to Reissue or Accept a Late Response to a Post Registration Office Action Due to Non-Receipt are reviewed under37 C.F.R. §§2.146(a)(5) and2.148.SeeTMEP §§1604.16,1606.12,1613.16,1708,1712.02(b).

SeeTMEP §1607 and TBMP §§303,307,308, and309 regarding petitions to cancel registrations under15 U.S.C. §1064,  which are handled by the Board.

1704 Petitionable Subject Matter

Ex Parte Examination

Under37 C.F.R. §§2.63(a) and(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.  However, under37 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 (seeTMEP §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.  SeeTMEP §§1501–1501.07 regarding appeal procedure.  For example, an examining attorney’s requirement for a special form drawing that agrees with the mark shown on the specimen(s) 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, 587 (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 Fla. Citrus Canners Coop., 37 USPQ 463 (Comm’r Pats. 1938);Ex parte Kleen-O-Dent Labs., 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 by either petition or appeal.  In re Dermahose Inc., 82 USPQ2d 1793, 1795, n.5 (TTAB 2007) .

A requirement for amendment of an identification of goods/services may also be reviewed by either petition or appeal. In re Stenographic Machs., Inc., 199 USPQ 313, 316 (Comm’r Pats. 1978).  On the other hand, a requirement for amendment of the classification is a procedural matter that may only be reviewed on petition. In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

If an applicant files a petition from an examining attorney’s formal requirement, the applicant subsequently may not appeal the requirement to the Board.  37 C.F.R. §2.63(c).

SeeTBMP §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 the Post Registration staff in connection with a proposed amendment filed under15 U.S.C. §1057  (“§7 amendment”), or an affidavit of use under15 U.S.C. §1058 or§1141k(“§8 affidavit” or “§71 affidavit”).  The decisions of Post Registration staff under15 U.S.C. §§10571058,1059, and1141kmay not be appealed to the Board.

An owner may petition the Director under Trademark Rule 2.146(a)(3),37 C.F.R. §2.146(a)(3), to request that an affidavit or declaration of incontestability under §15 of the Trademark Act,15 U.S.C. §1065,  be abandoned if the owner determines, after timely filing the affidavit or declaration, that the affidavit or declaration contained an inaccuracy.37 C.F.R. §2.167(j);seeTMEP §§1605,1605.03,1707.

Cancellation of a registration for failure to file an affidavit or declaration under §8 or §71 of the Trademark Act (15 U.S.C. §§1058,  1141k), or expiration of a registration for failure to file a renewal application under §9 (15 U.S.C. §1059), does not constitute petitionable subject matter under the “unintentional delay” standard of37 C.F.R. §2.66.SeeTMEP §1714.01(f)(ii)(D). Furthermore, a petition under37 C.F.R. §2.146 requesting that the Director accept a late-filed §8 or §71 affidavit or declaration, or a §9 renewal application, will not be granted because the Director has no authority to waive the deadline for filing these documents.See TMEP §§1604.04,1606.03,1613.04,1707. Such petitions will be dismissed since the Director lacks authority to grant them.

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),  905.

1705 Petition Procedure

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 by37 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.

1705.01 Standing

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 dismissed.

1705.02 Petition Fee

A petition must be accompanied by the fee required by37 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 Deputy Commissioner for Trademark Examination Policy 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.  See37 C.F.R. §2.146(c).

A petition fee will be waived only in an extraordinary situation (seeTMEP §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 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).  SeeTMEP §405.06.

1705.03 Evidence and Proof of Facts

A petition should include a statement of the relevant facts, and should be accompanied by any evidence to be considered.  Under37 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 under37 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 Deputy Commissioner for Trademark Examination Policy 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 (seeTMEP §303.02(c)), or a copy of a cancelled check that shows receipt of the filing fee for a missing document, 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, normally 30 days.

1705.04 Timeliness

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 issue date of the action or order of which the petitioner seeks review:

  • Denial of a request for an extension of time to file a notice of opposition -- 15 days (37 C.F.R. §2.146(e)(1));
  • Interlocutory order of the Trademark Trial and Appeal Board -- 30 days (37 C.F.R. §2.146(e)(2));
  • Final decision of the Trademark Trial and Appeal Board -- by not later than two months after the issue date of the decision or two months of actual knowledge of the decision and not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is cancelled/expired (see37 C.F.R. §2.146(d));
  • Denial of a request for an extension of time to file a statement of use -- by not later than two months after the issue date of the denial or two months of actual knowledge of the denial and not later than six months after the date the trademark electronic records system indicates that the application is abandoned (see37 C.F.R §2.146);
  • Section 7 rejection -- six months from date of issuance of Office action refusing to enter an amendment or correction (37 C.F.R §2.176);
  • Section 8 or 71 rejection -- six months from date of issuance of Office action maintaining a refusal of the affidavit (37 C.F.R. §2.165(b);seeTMEP §§1604.18–1604.18(a),1613.18–1613.18(a));
  • Section 9 rejection -- six months from date of issuance of Office action maintaining a refusal of the renewal (37 C.F.R. §2.186(b);seeTMEP §§1606.14–1606.14(a));
  • Petition to reinstate a registration for failure to perfect a timely filed maintenance filing under §§8, 9, or 71 -- by not later than two months after the issue date of the cancellation notice or two months of actual knowledge of the cancellation and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired (see37 C.F.R. §2.146(d);seeTMEP §1712.02(b));
  • Petition to revive -- by not later than two months after the issue date of the notice of abandonment or two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under 37 C.F.R. §2.20 or 28 U.S.C. §1746 that it did not receive the notice of abandonment (37 C.F.R. §2.66(a);seeTMEP §§1705.05,1714–1714.01(g));
  • Petition to revive goods/services/classes deleted for failure to respond to a partial refusal or requirement -- by not later than two months after the issue date of the examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained or two months after the date of actual knowledge of the issuance of the examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in part by examiner’s amendment, where the applicant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the examiner’s amendment (37 C.F.R. §2.66(a);seeTMEP §§718.02(a),1705.05,1714–1714.01(g) );
  • Examining attorney’s formal requirement -- six months from date of issuance (15 U.S.C. §1062(b)37 C.F.R. §§2.62,2.63(a),(b));
  • Petition to reverse an examining attorney’s holding of abandonment for failure to file a complete response to an Office action -- two months from issue date of notice of abandonment or two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the notice of abandonment (see37 C.F.R §2.146(d)(2)(i));
  • Request for reconsideration of decision on petition -- by not later than two months after the issue date of the decision denying the petition or two months after the date of actual knowledge of the decision denying the petition and not later than six months after the issue date of the decision, where the applicant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the decision (37 C.F.R. §§2.66(f)(1),2.146(i)(1));
  • Petition to the Director to reinstate application after failure to respond -- if the applicant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the action, or no action was issued, the petition must be filed by not later than two months of actual knowledge of the abandonment of an application and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in full or in part (37 C.F.R §2.146(d)(2)(i));
  • Petition to the Director to reinstate registration after failure to respond -- where the registrant has timely filed an affidavit of use or excusable non-use under Section 8 or 71 of the Act, or a renewal application under Section 9 of the Act, if the registrant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the action, or no action was issued, the petition must be filed by not later than two months after the date of actual knowledge of the cancellation/expiration of a registration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired (37 C.F.R §2.146(d)(2)(ii));
  • Petition to Director to review denial of certification of international application -- two months after the date of actual knowledge of the denial of certification of an international application under §7.13(b) and not later than six months after the trademark electronic records system indicates that certification is denied where the applicant or registrant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the action, or no action was issued (37 C.F.R §2.146(d)(2)(iii)).

If the rules do not provide an express deadline, the petition must be filed by not later than two months after the issue date of the action from which relief is requested.37 C.F.R §2.146(d)(1).

The time limits set forth in the rules are strictly enforced.  Petitions filed after the expiration of the deadlines are dismissed 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 to37 C.F.R. §§2.146(a)(5) and2.148.  SeeTMEP §1708regarding waiver of rules.

Petitions filed using the certificate of mailing and certificate of transmission procedures of37 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 of37 C.F.R. §2.197(a)(1) (seeTMEP §§305.02,306.05–306.05(d)).

SeeTMEP §1705.05 regarding the duty to exercise due diligence in monitoring the status of pending matters.

1705.05 Due Diligence

Applicants and registrants are responsible for tracking the status of matters pending before the USPTO.  It is reasonable to expect some notice from or action by the USPTO within six months of submitting a document in an application or registration. A party who has not received a notice or action from the USPTO within that time frame should promptly check the matter’s status and request corrective action if necessary.

Applicants and registrants can check the status of an application or registration through the Trademark Status and Document Retrieval (“TSDR”) database on the USPTO website athttp://tsdr.uspto.gov/, which is generally available 24 hours a day, seven days a week. The party should print the TSDR 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 ("TAC") at (571) 272-9250 or (800) 786-9199 to determine the status or to obtain clarification about 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.

If a status inquiry reveals that a document submitted to the USPTO is not in the electronic record or was not received in the Office, that an Office action or notice was issued but not received by the applicant or registrant, that an application has been abandoned or a registration cancelled or expired, or that some other problem exists, corrective action should be promptly requested.

When further action by the USPTO is necessary, applicants and registrants should make a written request to TAC at TrademarkAssistanceCenter@uspto.gov and state the nature of the action to be taken. If an application has been abandoned, a petition to revive under37 C.F.R §2.66 (if not due to Office error) or request for reinstatement under37 C.F.R §2.64(a) (if due to Office error) should be filed through the Trademark Electronic Application System ("TEAS"). SeeTMEP §§1702–1708,1713,1714. If a registration has been cancelled or expired, a request for reinstatement under37 C.F.R §2.64(b) (if due to Office error) or formal petition under37 C.F.R. §2.146 (if not due to Office error) should be filed through TEAS.SeeTMEP §§1712–1712.02.

In all cases, petitions and requests for reinstatement will be denied if filed more than six months after the electronic record is updated to reflect that an application is abandoned or that a registration is cancelled or expired.37 C.F.R. §§2.64(a)(1)(ii),(b)(1)(ii),2.66(a)(2),2.146(d)(2). This requirement removes any uncertainty in the Office’s assessment of whether an applicant or registrant was duly diligent in monitoring the status of an application or post-registration maintenance filing.

These deadlines also protect third parties who rely on the Trademark electronic record to determine whether a chosen mark is available for use or registration. For example, a third party may search USPTO records and understand that an earlier-filed potentially conflicting mark will not be revived or reinstated more than six months after the date the electronic record indicates that it was abandoned.

1705.06 Stay or Suspension of Pending Matters

37 C.F.R.  (Extract)

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(a) and (b) and 2.65(a) 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 under37 C.F.R. §2.146(g), or when37 C.F.R. §§2.63(a) and(b) and 2.65(a) 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 Deputy Commissioner for Trademark Examination Policy.  If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Deputy Commissioner for Trademark Examination Policy.  If a stay has not been specifically requested and granted under37 C.F.R. §2.146, the examining attorney mustnot suspend action on an application pending a decision on petition.

A request to suspend a proceeding before the Board pending a decision on petition should be directed to the Board.  37 C.F.R. §2.117(c);TBMP §510.03(a).   See TBMP §§510–510.03(b)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).  SeeTMEP §1714.01(b)(i).

1705.07 Signature of Petition

A petition to the Director under37 C.F.R. §2.146 must be personally signed by the individual petitioner, someone with legal authority to bind a juristic petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to37 C.F.R. §11.14 (“qualified practitioner”).  37 C.F.R. §2.146(c).  SeeTMEP §602 regarding persons authorized to represent a party before the USPTO, andTMEP §§611.06–611.06(h) for guidelines on persons with legal authority to bind various types of legal entities.

Petitions to the Director under37 C.F.R. §2.146 are often accompanied by separate verifications, signed by someone with firsthand knowledge of the facts to be proved on petition.  SeeTMEP §1705.03.  However, the petition itself must be separately signed by a proper party.  If the petitioner is represented by a qualified practitioner, the practitioner must sign the petition.  37 C.F.R. §§2.193(e)(5)(i),11.18(a);TMEP §611.03(e).  If the petitioner is not represented by a qualified practitioner, the petition must be signed by the petitioner or someone with legal authority to bind the petitioner.  37 C.F.R. §§2.146(c),2.193(e)(5)(ii);TMEP §611.03(e).  In the case of joint petitioners who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(5)(ii);TMEP §611.03(e).

Petitions to revive under37 C.F.R. §2.66 (seeTMEP §§1714–1714.01(g)) must include a statement that the delay was unintentional, signed by someone with firsthand knowledge.  37 C.F.R. §§2.66(b)(2),(c)(2);TMEP §1714.01(e).  Where a petition to revive under37 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 the petitioner, someone with legal authority to bind the petitioner, or a qualified practitioner is required.  However, any response to an Office action accompanying the petition (seeTMEP §§1714.01(a)(i)-(ii)) must be signed by a proper party.  37 C.F.R. §§2.62(b),11.18(a);TMEP §712.

If it appears that a petition (or a response accompanying a petition) was signed by an improper or excluded party, the staff attorney or paralegal reviewing the petition will follow the procedures inTMEP §§611.05–611.05(c) for processing documents signed by unauthorized parties.

See alsoTMEP §611.01(c) regarding signature of documents filed electronically.

1705.08 Request for Reconsideration of Denial of Petition

Under37 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 issuance date of the decision denying the petition; and (2) paying a second petition fee under37 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 Am. Nat'l Bank and Trust Co. of Chi., 33 USPQ2d 1535, 1537 (Comm’r Pats. 1993).

1705.09 Appeal to Federal Court

A registrant who is adversely affected by the Director’s decision regarding a §8 affidavit, §71 affidavit, or §9 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)(b)(1);37 C.F.R. §§2.145(a),(c).

Other types of Director’s decisions are not subject to appeal.  SeeIn re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 1028, 162 USPQ 106, 109–110 (C.C.P.A. 1969).

The deadline for filing an appeal or commencing a civil action is 63 days from the issuance date of the decision.15 U.S.C. §1071(a)(2),(b)(1);37 C.F.R. §2.145(d)(1),(d)(3).  

1706 Standard of Review on Petition

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 under37 C.F.R. §§2.63(a) and(b) and2.146(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 Pharm. Co., 34 USPQ2d 1778, 1781 (Comm’r Pats. 1995);In re Stenographic Machs., Inc., 199 USPQ 313, 316 (Comm’r Pats. 1978).  However, in review of an examining attorney’s action under37 C.F.R. §2.146(a)(3), the Director will reverse the examining attorney only where there has been clear error or an abuse of discretion.  In re GTE Educ. Servs., 34 USPQ2d 1478, 1479–1480 (Comm’r Pats. 1994);In re Direct Access Commc'ns (M.C.G.) Inc., 30 USPQ2d 1393, 1394 (Comm’r Pats. 1993).  See37 C.F.R. §2.146(b) andTMEP §1704 regarding petitionable subject matter.

The Director reviews the actions of the Post Registration staff on §8 affidavits, §71 affidavits, §9 renewal applications, and §7 amendments, to determine whether the judgment of the examiner was correct.  See In re Umax Data Sys., Inc., 40 USPQ2d 1539, 1541 (Comm’r Pats. 1996) (announcing change in standard of review of petitions to review Post Registration decisions on §7 amendments).

The Director will reverse an action of the Board on petition under37 C.F.R. §2.146(a)(3) only for clear error or abuse of discretion.  Riko Enterprises, Inc. v. Lindsley, 198 USPQ 480, 482 (Comm’r Pats. 1977).

The Director reviews the denial of an application filing date to determine whether the denial was correct.  SeeTMEP §204.02.

1707 Director’s Supervisory Authority Under37 C.F.R. §2.146(a)(3)

Under35 U.S.C. §2  and37 C.F.R. §2.146(a)(3), the Director may exercise supervisory authority on petition in appropriate circumstances.  As noted inTMEP §1706, the Director may review the actions of an examiner or paralegal under37 C.F.R. §2.146(a)(3) to determine whether there has been clear error or an abuse of discretion.

In some cases, the Director will exercise supervisory authority under37 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.  SeeIn re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013);In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992) (holding that an assertion of verified date of first use, coupled with statement of current method of use, interpreted as substantially in compliance with the minimum filing requirement for a statement of use for a verified statement that the “mark is in use in commerce.”);TMEP §1713.01.

The Director may also exercise supervisory authority under37 C.F.R. §2.146(a)(3) to make changes to USPTO practice.  See, e.g.,In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063, 1064 (Dir USPTO 2001);In re Slack, 54 USPQ2d 1504, 1506 (Comm'r Pats. 2000);In re Moisture Jamzz, Inc., 47 USPQ2d 1762, 1763–1764 (Comm'r Pats. 1997);In re El Taurino Rest., Inc., 41 USPQ2d 1220, 1222 (Comm'r Pats. 1996);In re Monte Dei Maschi Di Siena, 34 USPQ2d 1415, 1416 (Comm'r Pats. 1995).

1708 Waiver of Rules

Under37 C.F.R. §§2.146(a)(5) and2.148, 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 a §8 affidavit, §71 affidavit, or §9 renewal application.SeeTMEP §§1604.16,1606.12,1613.16,1712.02(b).

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 Grp., Inc., 25 USPQ2d 1157, 1158 (Comm’r Pats. 1992) (finding that a docketing error not extraordinary situation);In re Merck & Co., Inc., 24 USPQ2d 1317, 1318 (Comm’r Pats. 1992) (holding that inadvertent misidentification of serial number in request for extension of time to oppose not extraordinary situation);In re Tetrafluor Inc., 17 USPQ2d 1160, 1162 (Comm’r Pats. 1990) (finding that a 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, 1392 (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 Mktg. & Distribution, Inc., 71 USPQ2d 1620, 1622–1623 (Dir USPTO 2004) (holding that an applicant’s lack of knowledge of application filing fee increase not extraordinary situation);B & E Sales Co. Inc. v. Andrew Jergens Co., 7 USPQ2d 1906, 1907–1908 (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, 1970 (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, 672 (Comm’r Pats. 1980);In re Chicago Historical Antique Auto. Museum, Inc., 197 USPQ 289, 292 (Comm’r Pats. 1978).  See37 C.F.R. §2.197 regarding certificates of mailing.

A party will not be excused from compliance with the rules because the results in a particular case may be harsh.  See Buckhead, 71 USPQ2d at 1623 (rejecting petitioner’s argument that “justice requires” waiver of the filing date requirements of37 C.F.R. §2.21 to prevent the loss of priority relative to a conflicting application).

The Director has no authority to waive or suspend the requirement of a rule that is also a requirement of the statute, such as the deadline for filing an affidavit or declaration under §8 or §71 (15 U.S.C. §§1058,  1141k), or a renewal application under §9 (15 U.S.C.  §1059).See Checkers Drive-In Rest., Inc. v. Comm’r of Patents & Trademarks,51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. Cir. 1995), cert. denied 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit, Congress made no exception for the innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case.”);In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) (“Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.”). Therefore, a petition that requests a waiver of a statutory requirement will be dismissed, as the Director lacks authority to grant such a petition.

1709 Matters Delegated by Director

Pursuant to35 U.S.C. §3(a)  and(b), the Director has delegated the authority to the Commissioner for Trademarks to decide trademark-related petitions filed under37 C.F.R. §§2.66 and2.146, and to exercise supervisory authority in trademark-related matters pursuant to35 U.S.C.  §2.

Under35 U.S.C. §3(b)(3)(B)  and37 C.F.R. §2.146(h), the Commissioner for Trademarks may delegate this authority to the Deputy Commissioner for Trademark Examination Policy or the Deputy Commissioner for Trademark Operations, who may further delegate the authority.

Authority to decide trademark-related petitions filed under37 C.F.R. §2.146 has been delegated to the Deputy Commissioner for Trademark Examination Policy, who has further delegated authority to appropriate officials within the Office of Petitions.

1710 Petition to Make Special

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 by37 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 under37 C.F.R. §2.20.

The petition is reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy.  The applicant should first file the application via the Trademark Electronic Application System (“TEAS”) athttp://www.uspto.gov.  The applicant should then submit a petition to make special that includes the newly assigned serial number.  To ensure proper routing and processing, the Office prefers that the petition also be filed electronically.  In TEAS, the Petition to Make Special form can be accessed by clicking on the link entitled “Petition Forms.”

Alternatively, the petition should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number:  571-273-0032.  If the petition is submitted by mail, it should be submittedseparately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy.

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.  SeeTMEP §702.02 regarding the requirements and filing procedure for a Request to Make Special.

1710.01 Basis for Granting or Denying Petition

Invoking supervisory authority under37 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 ademonstrable 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 isnot 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.

1710.02 Processing Petition

Each petition to make “special,” together with the petition decision, is made part of the record.  If the petition is granted, the prosecution history of the application in the Trademark database will reflect that the petition for “special” handling has been granted.  

1711 Review of Denial of Filing Dates

If an application is denied a filing date and the applicant wants the filing date restored, the usual procedure is to file a petition under37 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 (seeTMEP §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 under37 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.  If the application was filed on paper, 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 submitsall of the following:  (a) a return postcard indicating that the USPTO specifically acknowledged receipt of the element in question (seeTMEP §303.02(c)); (b) a substitute to replace the lost element; (c) the application documents 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).  SeeIn re Henkel Loctite Corp., 69 USPQ2d 1638 (Dir USPTO 2003).

In the above situations, a staff attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy 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 by37 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 by37 C.F.R. §2.6(a)(1).  The USPTO prefers that the application be filed electronically via TEAS athttp://www.uspto.gov.  The application filing 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 submit a request to restore the original filing date.  To ensure proper routing and processing, the Office prefers that the request also be filed electronically.  In TEAS, the Request to Restore Filing Date form can be accessed by clicking on the link entitled “Petition Forms” athttp://www.uspto.gov.  Alternatively, the request should be faxed to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950.  The request should:  (1) include the new serial number; (2) state the reason(s) why the applicant believes the filing date was denied in error; and (3) include a copy of any Notice of Incomplete Trademark Application received from the USPTO.  SeeTMEP §204.02.

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 issues 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 issuance date of the action, or it will be dismissed as untimely.  37 C.F.R. §2.146(d).  Although applicants have two months from the issuance 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 by37 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).

1712 Reinstatement of Applications and Registrations
1712.01 Reinstatement of Applications Abandoned Due to Office Error

If an applicant has proof that 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.  37 C.F.R §2.64(a) There is no fee for a request for reinstatement.  To ensure proper routing and processing, the Office prefers that the request be filed electronically.  In TEAS, the Request for Reinstatement form can be accessed by clicking on the link entitled “Petition Forms” athttp://www.uspto.gov.

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 or that was held abandoned in total after a partial refusal or requirement (see37 C.F.R §2.64(a)(2)):

  • (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 (seeTMEP §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 of37 C.F.R. §2.197 (for the specific requirements for providing proof, seeTMEP §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 of37 C.F.R. §2.197 (for the specific requirements for providing proof, seeTMEP §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 (seeTMEP §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 a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under37 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 under37 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, i.e., the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filedbefore the issuance date of the action or notice.  SeeTMEP §609.03 regarding the applicant’s duty to notify the USPTO when the correspondence address changes.
  • (10) An application is abandoned in full for failure to respond to an Office action or for an incomplete response to a final Office action when the Office action states that the refusal or requirement applies to only certain goods, services, and/or classes.  SeeTMEP §718.02(a).
  • (11) An application is abandoned in total after a refusal or requirement that applies to only certain goods, services, and/or classes is upheld on appeal or when the applicant withdraws or fails to prosecute an appeal of a refusal or requirement that applies to only certain goods, services, and/or classes to the Board.  SeeTMEP §718.02(a).

The applicant must file a request for reinstatement by not later than two months after the issue date of the notice of abandonment.37 C.F.R §2.64(a)(1)(i). If the applicant did not receive the notice of abandonment, the applicant must file the request by not later than two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned.37 C.F.R §2.64(a)(1)(ii). The request must also include a properly signed declaration under37 C.F.R §2.20 or28 U.S.C. §1746 stating that the applicant did not receive the notice of abandonment.Id

When an application is reinstated, a computer-generated notice of reinstatement is sent to the correspondence address of record and the Trademark electronic records system is updated accordingly.  

If the applicant is not entitled to reinstatement, a request for reinstatement may be considered as a petition to revive or a petition to the Director and must meet all the requirements of37 C.F.R. §2.66 or37 C.F.R §2.146.  SeeTMEP §§1702–1708 andTMEP §§1714–1714.01(g).

1712.02 Reinstatement of Registrations Cancelled or Expired

37 C.F.R.  Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error.

  • (a) Request for Reinstatement of an Abandoned Application. The applicant may file a written request to reinstate an application abandoned due to Office error. There is no fee for a request for reinstatement.
    • (1) Deadline. The applicant must file the request by not later than:
      • (i) Two months after the issue date of the notice of abandonment; or
      • (ii) Two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment.
    • (2) Requirements. A request to reinstate an application abandoned due to Office error must include:
      • (i) Proof that a response to an Office action, a statement of use, or a request for extension of time to file a statement of use was timely filed and a copy of the relevant document;
      • (ii) Proof of actual receipt by the Office of a response to an Office action, a statement of use, or a request for extension of time to file a statement of use and a copy of the relevant document;
      • (iii) Proof that the Office processed a fee in connection with the filing at issue and a copy of the relevant document;
      • (iv) Proof that the Office sent the Office action or notice of allowance to an address that is not the designated correspondence address; or
      • (v) Other evidence, or factual information supported by a declaration under § 2.20 or 28 U.S.C. 1746, demonstrating Office error in abandoning the application.
  • (b) Request for Reinstatement of Cancelled or Expired Registration. The registrant may file a written request to reinstate a registration cancelled or expired due to Office error. There is no fee for the request for reinstatement.
    • (1) Deadline. The registrant must file the request by not later than:
      • i Two months after the issue date of the notice of cancellation/expiration; or
      • (ii) Where the registrant has timely filed an affidavit of use or excusable non-use under section 8 or 71 of the Act, or a renewal application under section 9 of the Act, two months after the date of actual knowledge of the cancellation/expiration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired, where the registrant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of cancellation/expiration or where the Office did not issue a notice.
    • (2) Requirements. A request to reinstate a registration cancelled/expired due to Office error must include:
      • i Proof that an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action was timely filed and a copy of the relevant document;
      • (ii) Proof of actual receipt by the Office of an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action and a copy of the relevant document;
      • (iii) Proof that the Office processed a fee in connection with the filing at issue and a copy of the relevant document;
      • (iv) Proof that the Office sent the Office action to an address that is not the designated correspondence address; or
      • (v) Other evidence, or factual information supported by a declaration under § 2.20 or 28 U.S.C. 1746, demonstrating Office error in cancelling/expiring the registration.
  • (c) Request for Reinstatement May be Construed as Petition. If an applicant or registrant is not entitled to reinstatement, a request for reinstatement may be construed as a petition to the Director under § 2.146 or a petition to revive under § 2.66, if appropriate. If the applicant or registrant is unable to meet the timeliness requirement under paragraphs (a)(1) or (b)(1) of this section for filing the request, the applicant or registrant may submit a petition to the Director under § 2.146(a)(5) to request a waiver of the rule.
1712.02(a) Request for Reinstatement Due to Office Error

A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that a USPTO error caused the registration to be cancelled or expired.37 C.F.R §2.64(b).  There is no fee for a request for reinstatement.  However, to ensure proper routing and processing, the USPTO prefers that the request be filed electronically using the “Petition to the Director under Trademark Rule 2.146” form, which can be accessed at http://www.uspto.gov/trademarks/teas/petition_forms.jsp. Although a petition fee is required in order to file the form, it will be refunded if USPTO error is found.

The following are examples of situations where the USPTO may reinstate a cancelled or expired registration (see37 C.F.R §2.64(b)(2)):

  • (1) The registrant presents proof that a proper 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 (seeTMEP §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 under §8 or §71, renewal application under §9, or response to Office action, with proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of37 C.F.R. §2.197 (for the specific requirements for providing proof, seeTMEP §305.02(f)).
  • (5) The registrant supplies a copy of the affidavit under §8 or §71, renewal application under §9, 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 of37 C.F.R. §2.197 (for the specific requirements for providing proof, seeTMEP §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, §9 renewal application, or response (seeTMEP §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 under37 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 under37 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 a USPTO error, i.e., the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filedbefore the issuance date of the action.

The registrant must file a request for reinstatement by not later than two months after the issue date of the notice of cancellation/expiration.37 C.F.R §2.64(b)(1)(i). If the registrant did not receive a notice of cancellation/expiration or the Office did not issue a notice, the registrant must file the request by not later than two months after the date of actual knowledge of the cancellation/expiration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired.37 C.F.R §2.64(b)(1)(ii). The request must also include a properly signed declaration under37 C.F.R §2.20 or28 U.S.C. §1746 stating that the registrant did not receive the notice of cancellation/expiration if one was issued.Id.  

The Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under15 U.S.C. §1059  or affidavit of use of a registered mark under15 U.S.C. §1058Checkers Drive-In Rest's. Inc. v. Comm'r of Patents & Trademarks, 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995),cert. denied 516 U.S. 866 (1995);In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984).  Therefore, if the registrant did not timely file a §8 affidavit, §71 affidavit, or §9 renewal application, a request to reinstate a cancelled or expired registration will be dismissed, regardless of the reason for the delay, as the Director lacks authority to grant such a petition.

1712.02(b) Formal Petition

If a registrant is not entitled to reinstatement, a request for reinstatement may be construed as a petition to the Director under37 C.F.R §2.146, if appropriate. If a registrant failed to timely respond to an Office action refusing to accept a §8 affidavit, §71 affidavit, or §9 renewal application due to an extraordinary situation, the registrant may file a formal petition under37 C.F.R. §§2.146(a)(5) and2.148 to accept a late response.  

1712.02(b)(i) Time for Filing Petition

Pursuant to37 C.F.R. §2.146(d)(1), the petition must be filed by not later than two months after the issue date of the cancellation/expiration notice.  If the registrant did not receive the cancellation/expiration notice, or no notice was issued, the petition must be filed by not later than two months after the date of actual knowledge of the cancellation/expiration of the registration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired.  See37 C.F.R. §2.146(d)(2). SeeTMEP §§1705.04 and1705.05 regarding timeliness and diligence.

1712.02(b)(ii) Standard of Review

The unintentional delay standard of37 C.F.R. §2.66 doesnot apply to registered marks.  TMEP §1714.01(f)(ii)(D).  Under37 C.F.R. §§2.146(a)(5) and2.148, 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.   SeeTMEP §1708 for further discussion of conditions for waiver of rules.  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 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 (seeTMEP §1712.02(a), paragraph 9), the registrant may file a formal petition under37 C.F.R. §2.146. The petition should include a clear statement that the Office action was not received and either a complete response to the Office action, to expedite acceptance of the maintenance filing, or a request that the Office action be reissued.

If the petition does not include a clear statement that the Office action was not received and either a complete response or request to reissue the Office action, the USPTO will notify the petitioner that this information is required, and grant the petitioner 30 days to submit the information. If the petitioner does not submit this information within the time allowed, the petition will be denied because the petitioner did not meet the requirements for filing a petition and the registration will remain cancelled. See37 C.F.R. §2.146(c).

1712.02(b)(iii) No Authority to Waive Statutory Requirements

As noted inTMEP §1708, the Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under15 U.S.C. §1059  or affidavit of use of a registered mark under15 U.S.C. §1058.   Therefore, if the registrant did not timely file a §8 affidavit, §71 affidavit, §9 renewal application, a petition to extend or waive the statutory deadline will be dismissed, regardless of the reason for the delay.

If a registrant contends that a proper affidavit or renewal application was timely filed, but the registrant does not have proof that the 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.

Similarly, if a registrant files a premature affidavit or renewal application, and does not file a newly executed affidavit or renewal application within the statutory filing period (which includes the grace period), the Director will not grant a petition to accept the premature affidavit or renewal application.  SeeTMEP §§1604.04(a) and1606.03(a).

1713 Petition to Reverse Holding of Abandonment for Incomplete Response
1713.01 Standard of Review

Under37 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.  SeeTMEP §§718.03–718.03(b) regarding incomplete responses.

When an examining attorney holds an application abandoned because the applicant’s response is incomplete, the applicant may petition the Director to reverse the holding under37 C.F.R. §2.146.  SeeTMEP §718.02(a)regarding partial abandonment for failure to respond completely to a final refusal or final requirement that is expressly limited to only certain goods/services/class(es) andTMEP §718.03(a) for failure to respond completely in all other situations.

However, the Director will reverse the examining attorney’s holding of abandonment only if there has been clear error or an abuse of discretion or, in rare cases, where a petitioner can show that it has substantially complied with the requirements of the statute or rules.  In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013);In re GTE Educ. Servs., 34 USPQ2d 1478, 1479-80 (Comm’r Pats. 1994);In re Legendary, Inc., 26 USPQ2d 1478, 1479 (Comm’r Pats. 1992).  Note:  The “unintentional delay” standard for reviving abandoned applications pursuant to37 C.F.R §2.66 doesnot apply to applications held abandoned because a response was deemed incomplete under37 C.F.R. §2.65(a).  SeeTMEP §1714.01(f)(ii)(A).

1713.02 Failure to Respond to Notice of Incomplete Response or Denial of Request for Reconsideration with No Appeal Filed

If an examining attorney issues an “Examiner’s Non-Responsive Amendment” action, “Examiner’s Action Continuing a Final Refusal – 30 day Letter” (or, if appropriate, “SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter”), or a “Request for Reconsideration Denied – No Appeal Filed - Time Remaining” (or, if appropriate, “SU - Request for Reconsideration Denied No Appeal Filed - Time Remaining”) action, and the applicant does not respond in the time provided, the application will be abandoned. If the applicant did not receive the action or fails to timely respond due to some extraordinary circumstance, the applicant may file a petition to the Director to waive37 C.F.R. §2.62(a) and permit a late response to be submitted under37 C.F.R. §2.146(a)(5).

If the applicant submits a response with the petition and the petition is granted, the Director will instruct the examining attorney to review the response. If the applicant did not receive the action and does not submit a response with the petition and the petition is granted, the USPTO will re-issue the action and provide the applicant with a new 30-day period in which to respond.  

However, when it appears that a response is signed by an improper or excluded party and an examining attorney issues an Office action granting an applicant additional time (30 days or the time remaining in the statutory response period) to complete a response, if the applicant fails to respond or to complete the response within the time granted or remaining, the examining attorney must issue an "Abandoned Due to Incomplete Response" action.SeeTMEP §§715.03(a)(ii)(E),718.03,718.03(b). If the applicant wishes to submit evidence that an authorized party signed the original response, the applicant may petition the Director to exercise supervisory authority and reverse the holding and reinstate the application under37 C.F.R. §2.146(a)(3). If the evidence establishes that a proper party signed the response, the Director will grant the petition and instruct the examining attorney to review the response. If, however, the evidence establishes that the response was signed by an unauthorized party, the Director will find that (1) the application should have been abandoned for failure to respond, (2) the petition will be construed as a petition to revive under37 C.F.R. §2.66, (3) revival based on unintentional delay is proper, and (4) a response signed by a proper party must be submitted. In this situation, if evidence is provided in response to a final Office action, the response will be treated as a request for reconsideration under37 C.F.R §2.63(b)(3) and the applicant must also file a notice of appeal to the Trademark Trial and Appeal Board under37 C.F.R §2.141 or a statement that no appeal is being filed from the final refusal(s) or requirement(s).37 C.F.R §2.66(b)(3). To expedite revival in these circumstances, a properly signed response (or request for reconsideration) should be submitted with the petition.

The granting of the petition doesnotextend the time for filing a notice of appeal or filing a petition to review the examining attorney’s action under37 C.F.R. §2.63(a) and(b).15 U.S.C. §1062(b)37 C.F.R. §2.142(a). Therefore, in most circumstances, if the response does not overcome all outstanding refusals or satisfy all outstanding requirements, the application will again be abandoned and an "Abandoned Due to Incomplete Response" notice will issue (but seeTMEP §1714.01(a)(ii) regarding petition to revive for failure to respond to a final action).

1714 Petition to Revive Abandoned Application

37 C.F.R.  Revival of applications abandoned in full or in part due to unintentional delay.

  • (a) Deadline. The applicant may file a petition to revive an application abandoned in full or in part 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 by not later than:
  • (1) Two months after the issue date of the notice of abandonment in full or in part; or
  • (2) Two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in full or in part, where the applicant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment.
  • (b) Petition to Revive Application Abandoned in Full or in Part for Failure to Respond to an Office Action. A petition to revive an application abandoned in full or in part because the applicant did not timely respond to an Office action must include:
  • (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) A response to the Office action, signed pursuant to § 2.193(e)(2), or a statement that the applicant did not receive the Office action or the notification that an Office action issued. If the applicant asserts that the unintentional delay is based on non-receipt of an Office action or notification, the applicant may not assert non-receipt of the same Office action or notification in a subsequent petition. When the abandonment is after a final Office action, the response is treated as a request for reconsideration under § 2.63(b)(3) and the applicant must also file:
    • (i) (i) A notice of appeal to the Trademark Trial and Appeal Board under § 2.141 or a petition to the Director under § 2.146, if permitted by § 2.63(b)(2)(iii); or
    • (ii) (ii) A statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).
  • (c) Petition to Revive Application Abandoned for Failure to Respond to a Notice of Allowance. A petition to revive an application abandoned because the applicant did not timely respond to a notice of allowance must include:
  • (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; and one of the following:
    • (i) A statement of use under § 2.88, signed pursuant to § 2.193(e)(1), and 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;
    • (ii) A request for an extension of time to file a statement of use under § 2.89, signed pursuant to § 2.193(e)(1), and 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;
    • (iii) A statement that the applicant did not receive the notice of allowance and a request to cancel said notice and issue a new notice. If the applicant asserts that the unintentional delay in responding is based on non-receipt of the notice of allowance, the applicant may not assert non-receipt of the notice of allowance in a subsequent petition; or
    • (iv) In a multiple-basis application, an amendment, signed pursuant to § 2.193(e)(2), deleting the section 1(b) basis and seeking registration based on section 1(a) and/or section 44(e) of the Act.
  • (3) 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) Statement of Use or Petition to Substitute a Basis May Not Be Filed More Than 36 Months After Issuance of the Notice of Allowance. In an application under section 1(b) of the Act, the Director will not grant a petition under this section if doing so would permit an applicant to file a statement of use, or a petition under § 2.35(b) to substitute a basis, more than 36 months after the issue date of the notice of allowance under section 13(b)(2) of the Act.
  • (e) Request for Reconsideration. If the Director denies a petition to revive under this section, the applicant may request reconsideration, if:
  • (1) (1) The applicant files the request by not later than:
    • (i) Two months after the issue date of the decision denying the petition; or
    • (ii) Two months after the date of actual knowledge of the decision denying the petition and not later than six months after the issue date of the decision where the applicant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the decision; and
  • (2) The applicant pays a second petition fee under §2.6.

Upon  proper submission of a petition to revive, an abandoned application may be revived under37 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)  and1062(b).  Petitions filed under37 C.F.R. §2.66 are handled by the paralegals in the Office of the Deputy Commissioner for Trademark Examination Policy.  SeeTMEP §1709 regarding the delegation of authority to decide petitions.

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, athttp://www.uspto.gov/trademarks/teas/index.jsp.

1714.01 Procedural Requirements for Filing Petition to Revive

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 in37 C.F.R. §2.66(b).  SeeTMEP §§1714.01(a)–(a)(ii).  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 in37 C.F.R. §2.66(c).  SeeTMEP §§1714.01(b)-(c).

When a petition does not meet the procedural requirements of37 C.F.R. §2.66, a paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy 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.

If a petition to revive filed through TEAS is automatically granted by the electronic system and it is subsequently determined that the petition does not meet the procedural requirements of37 C.F.R. §2.66, a paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner that the granting of the petition has been rescinded because the petition does not meet the requirements of the rule.  The petitioner will be granted 30 days to supplement the petition by submitting the missing element(s).  If the petitioner does not submit the necessary information or fee(s) within the time allowed, the petition will be denied.

1714.01(a) Failure to Timely Respond to an Examining Attorney’s Office Action

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, athttp://www.uspto.gov/trademarks/teas/index.jsp.

1714.01(a)(i) Response to Nonfinal Office Action

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’snonfinal Office action are listed in37 C.F.R. §2.66(b).  The petition must include all of the following:

  • (1) The petition fee required by37 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) A properly signed response to the Office action or a statement that the applicant did not receive the Office action or the notification that an Office action issued.  

Note that an applicant may not assert again that it did not receive the same Office action or notification in a subsequent petition.37 C.F.R. §2.66(b)(3).

If the petition states that applicant did not receive the Office action, and the petition is granted, the examining attorney will conduct a new search and issue a new Office action and provide the applicant with a new response period, or, if all issues previously raised remain the same, after reviving the application, the USPTO will send a notice to the applicant directing the applicant to view the previously issued Office action on the TSDR portal on the USPTO website athttp://tsdr.uspto.gov/, and provide the applicant with a new six-month period in which to file a response.

SeeTMEP §718.02(a)regarding a petition to revive a portion of an application that was partially abandoned. SeeTMEP §1714.01 regarding situations in which a petition to revive fails to meet the procedural requirements of37 C.F.R. §2.66(b) (e.g., when there is no allegation that the applicant did not receive the Office action, but the petition does not include a proposed response).

1714.01(a)(ii) Response to Final Office Action

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’sfinal Office action are listed in37 C.F.R. §2.66(b).  The petition must include all of the following:

  • (1) The petition fee required by37 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) A properly signed response to the Office action or a statement that the applicant did not receive the Office action or the notification that an Office action issued.
  • (4) If the applicant does not assert non-receipt of the Office action or notification, the response is treated as a request for reconsideration under37 C.F.R. §2.66(b)(3) and the applicant must also file: (a) a notice of appeal to the Trademark Trial and Appeal Board under§2.141 or a petition to the Director under§2.146, if permitted by37 C.F.R §2.63(b)(2)(iii) or (b) a statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).

In some cases, an amendment requesting registration on the Supplemental Register or registration under15 U.S.C. §1052(f) may also be an appropriate response to a final refusal of registration on the Principal Register.SeeTMEP §§714.05(a)(i),816.04,1212.02(h)

Generally, if the petition does not include the requirements set out in37 C.F.R §2.66(b), the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting the required items or claim of non-receipt. If the applicant does not submit a proper response or claim of non-receipt within the time allowed, the petition will be denied. However, if the applicant previously filed a timely request for reconsideration that did not overcome all outstanding refusals and satisfy all outstanding requirements, a late appeal will not be accepted on petition. That is because the filing of a request for reconsideration does not stay or extend the time for filing an appeal.37 C.F.R. §2.66(b)(3);TMEP §715.03.

If the petition states that applicant did not receive the final action, and the petition is granted, the USPTO will issue a new final action and provide the applicant with a new response period. If all issues previously raised remain the same, the USPTO will send a notice to the applicant directing the applicant to view the previously issued final action on the TSDR portal on the USPTO website athttp://tsdr.uspto.gov/, and provide the applicant with a new six-month period in which to file a response. Note, however, that the applicant may not assert again that it did not receive the final Office action or notification in a subsequent petition.37 C.F.R. §2.66(b)(3).

SeeTMEP §§1705.04 and1714.01(d) regarding petition timeliness andTMEP §1705.05regarding due diligence in monitoring the status of an application.

1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, athttp://www.uspto.gov.

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in37 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 by37 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 (37 C.F.R. §2.66(c)(2)).  The statement does not have to be verified;
  • (3) Either a statement of use under37 C.F.R §2.88 or a request for an extension of time to file a statement of use under37 C.F.R §2.89 (37 C.F.R §2.66(c)(2)(i), (ii)); and
  • (4) The required fees for the number of extension requests that the applicant should have filed if the application had never been abandoned (37 C.F.R §2.66(c)(2)(i), (ii)).

Example 1:  If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned.  If a petition to revive is filed July 23, 2009, with a statement of use, the petition must include:  (1) the fee for the statement of use; (2) the fee for the extension request that was due July 14, 2009; and (3) the petition fee.

Example 2:  If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned.  If a petition to revive is filed January 23, 2010, without a statement of use, the petition must be accompanied by:  (1) the second extension request that was due January 14, 2010, with the filing fee therefor; (2) the fee for the first extension request that was due July 14, 2009; and (3) the petition fee.  If the petition is granted, a statement of use or third extension request will be due July 14, 2010.

Unless a statement of use is filed with or before the petition, the applicant must file any further requests for extension of time to file a statement of use that become due while the petition is pending, or file a statement of use (37 C.F.R §2.66(c)(3)).  SeeTMEP §1714.01(b)(i).

 Example:  If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned.  If a petition to revive is filed January 2, 2010, without a statement of use, the petition must include:  (1) the first extension request that was due July 14, 2009, with the filing fee therefor; and (2) the petition fee.  In addition, if the petition is pending, the applicant must submit by January 14, 2010 either: (1) a statement of use (with the required fee), or (2) a second extension request (with the required fee) before the petition can be granted.

The USPTO willnotgrant 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 issuance 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 dismissed, and the petition fee will be refunded.

NOTE:  Multiple Basis Applications.  In a multiple-basis application, if in response to a notice of abandonment the applicant elects to delete the intent-to-use basis and only keep the basis or bases to which the notice of allowance does not pertain, then the applicant does not have to file a statement of use or extension request with the petition, or file any further extension requests while the petition is pending.  Instead, applicant may submit with the petition a request to delete the intent-to-use basis or the goods/services/classes to which the intent-to-use basis applies and proceed to registration on the alternative basis or bases for registration for those goods/services/classes supported by such alternative bases.

SeeTMEP §§1705.04 and1714.01(d) regarding petition timeliness andTMEP §1705.05regarding due diligence in monitoring the status of an application.

1714.01(b)(i) Applicant Must File Statement of Use or Further Extension Requests During Pendency of a Petition

Filing a petition to revive does not stay the time for filing a statement of use or further request(s) for extension of time to file a statement of use.  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, 1764 (Comm’r Pats. 1997).

Please note that an applicant may file a petition to revive and an extension request through TEAS.  However, if the applicant files a statement of use with the petition to revive form in TEAS, the TEAS form will require submission of the fee(s) for the missing extension request(s).  SeeTMEP §§1108–1108.05 regarding extension requests, andTMEP §§1109–1109.18 regarding statements of use.

1714.01(c) Notice of Allowance Not Received

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, athttp://www.uspto.gov.

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in37 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 by37 C.F.R. §2.6; and
  • (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) A statement that the applicant did not receive the notice of allowance and a request to cancel said notice and issue a new notice. If the applicant asserts that the unintentional delay in responding is based on non-receipt of the notice of allowance, the applicant may not again assert non-receipt of the notice of allowance in a subsequent petition.

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)(2)(iii).  If the petition is granted, the USPTO will cancel the original notice of allowance and issue a new notice, giving the applicant a new six-month period in which to file a statement of use or extension request. Note that the applicant may not assert again that it did not receive the notice of allowance in a subsequent petition.Id.

If the petitioner files an extension request with a petition that alleges nonreceipt of the notice of allowance, the USPTO will presume that the applicant wants to maintain the issue date of the original notice of allowance and will process the extension request. Similarly, if the petitioner files a statement of use and the required fees for any missing extension requests with a petition that alleges nonreceipt of the notice of allowance, the USPTO will presume that the applicant intends to maintain the issue date of the original notice of allowance and will process the statement of use.

If the petitioner files a statement of use with a petition that alleges nonreceipt of the notice of allowance but does not include the required fees for any missing extension requests, the USPTO will give the petitioner the option of:  (1) having the notice of allowance cancelled and reissued, the statement of use not processed, 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. If the applicant files the statement of use with the petition to revive form in TEAS, the TEAS form will require submission of the fees for the missing extension requests.

1714.01(d) Timeliness

Under37 C.F.R. §2.66(a), a petition to revive an abandoned application must be filed by not later than:  (1) two months after the issue date of the notice of abandonment; or (2) two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in full, where the applicant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the notice of abandonment.  A petition to revive an application as to goods/services/classes deleted (abandoned) for failure to respond to a partial refusal or requirement must be filed by not later than:  (1) two months after the issue date of the examiner’s amendment setting forth the changes that will be made in the identification of goods/services; or (2) two months after the date of actual knowledge of the issuance of the examiner’s amendment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in part by examiner’s amendment, where the applicant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the examiner’s amendment, provided the application has not registered.

If a petition is untimely, the USPTO will deny the petition and refund the petition fee.  

The applicant may file a petition to revive before the applicant receives the notice of abandonment or the examiner’s amendment abandoning in part.

SeeTMEP §718.02(a) regarding partial abandonment,TMEP §1705.04 regarding petition timeliness, andTMEP §1705.05 regarding an applicant’s duty to exercise due diligence in monitoring the status of an application.

1714.01(e) Signed Statement that Delay Was Unintentional

Under37 C.F.R. §§2.66(b)(2),2.66(c)(2), and2.193(e)(4), 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.  Generally, it is not necessary to explain the circumstances that caused the unintentional delay and the statement does not have to be verified.

However, if the applicant is alleging that non-receipt of an Office action or notice of allowance caused the unintentional delay, this should be stated; no further explanation is necessary. Note, however, that an applicant may not assert again non-receipt of the same Office action, notification, or notice of abandonment in a subsequent petition.

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 firsthand knowledge.  Generally, the USPTO will not question the signatory’s authority to sign the statement.  However, any response to an Office action accompanying the petition (seeTMEP §1714.01(a)(i)-(ii)) must be signed by a qualified practitioner, or by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) if the applicant is not represented by a qualified practitioner.  37 C.F.R. §§2.62(b),2.193(e)(2), and11.18(a).  SeeTMEP §§611.03(b) and712–712.03regarding signature of responses to Office actions,TMEP §602 regarding persons authorized to represent a party before the USPTO, andTMEP §§611.06–611.06(h) for guidelines on persons with legal authority to bind various types of legal entities.

See alsoTMEP §1705.07 regarding signature of petitions, andTMEP §611.01(c) regarding signature of documents filed through TEAS.

1714.01(f) Applicability of Unintentional Delay Standard
1714.01(f)(i) Situations Where the Unintentional Delay Standard Applies

The unintentional delay standard of Trademark Rule 2.66 applies only to the “failure” to respond to an examining attorney’s Office action or a notice of allowance.  See15 U.S.C. §§1051(d)(4)1062(b).  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 in37 C.F.R. §2.88(c):  (1) the fee for at least a single class; (2) at least one specimen or facsimile of the mark as used in commerce; and (3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant stating that the mark is in use in commerce.

For a trademark or service mark, the minimum filing requirements for a request for extension of time to file a statement of use are:  (1) a verified statement, signed by the applicant or a person properly authorized to sign on behalf of the applicant, that the applicant has a continued bona fide intention to use the mark in commerce; (2) an identification of the goods/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 Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996);TMEP §1108.04. See TMEP§1108.04 for the minimum filing requirements for an extension request for a collective mark or certification mark.

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 under37 C.F.R. §2.66.

An applicant may also file a petition to revive under37 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 by15 U.S.C.  §1070.

1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does Not Apply

The unintentional delay standard of Trademark Rule 2.66 applies only to thefailure to respond to an examining attorney’s Office action or a notice of allowance.  15 U.S.C. §§1051(d)(4)  and1062(b).

1714.01(f)(ii)(A) Examining Attorney’s Holding of Abandonment for Failure to File Complete Response to Office Action

The unintentional delay standard of37 C.F.R. §2.66 doesnot apply to an application that is abandoned for filing an incomplete response to an examining attorney’s Office action.  Incomplete responses to examining attorneys’ Office actions are governed by37 C.F.R. §2.65(a)-(a)(2), which gives the examining attorney discretion to grant an applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response pursuant to37 C.F.R. §2.65(a)(2).  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 under37 C.F.R. §2.146.  The Director will reverse the examining attorney’s action only if there is clear error or an abuse of discretion.  SeeTMEP §1713.

A request for reconsideration of a final refusal (seeTMEP §§715.03–715.03(c) ) that does not meet all legal requirements and 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 filing a notice of appeal runs from the issuance date of the final action.  TMEP §715.03(c).  If the time for appeal has expired and the application is abandoned for an incomplete response, the applicant may not file a petition to revive under37 C.F.R. §2.66. The applicant may file a petition to the Director to review the examining attorney’s action under37 C.F.R. §2.146. SeeTMEP §1713 regarding petitions to reverse a holding of abandonment for an incomplete response.

1714.01(f)(ii)(B) 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 forfiling a statement of use, as set forth in37 C.F.R. §2.88(c), the applicant may file a petition to revive under37 C.F.R. §2.66.  However, the applicant may not file a petition to revive under37 C.F.R. §2.66 if the applicant met the minimum filing requirements of37 C.F.R. §2.88(c), but the examining attorney later refuses registration on the ground that the applicant failed to satisfy the statutory requirements for acomplete 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 or the dates of use are subsequent to the deadline for filing the statement of use).  The applicant may appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board.  SeeTMEP §1109.16(a) regarding the requirements that must be met within the statutory period for filing the statement of use.

1714.01(f)(ii)(C) Goods/Services Omitted from Statement of Use or Request for Extension of Time to File a Statement of Use

If the applicant lists the goods/services/classes in a statement of use or request for an extension of time to file a statement of use, and omits any goods or services that were listed in the notice of allowance, the USPTO 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. §§2.88(b)(1)(iv),2.89(f);TMEP §§1108.02(d),1109.13.  In these situations, the applicant may not file a petition under37 C.F.R. §2.66 claiming unintentional delay in filing a statement of use or extension request for the omitted goods/services.

1714.01(f)(ii)(D) 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 a §8 affidavit, §71 affidavit, or §9 renewal application, even if the electronic record does not indicate the registration is cancelled or expired, the registrant may file a petition to the Director under37 C.F.R. §§2.146(a)(5) and2.148 to waive a rule and accept a late response.  The petition must be filed by not later than two months after the issue date of the notice of cancellation/expiration.37 C.F.R §2.146(d)(1). Where the registrant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the action, the petition must be filed by not later than two months of actual knowledge of the cancellation/expiration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired.37 C.F.R §2.146(d)(2)(ii).

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.  SeeTMEP §1708 regarding the waiver of rules. Failure to receive the post registration Office action may be considered an extraordinary situation.

SeeTMEP §§1712.02–1712.02(b) regarding requests to reinstate cancelled or expired registrations.

1714.01(f)(ii)(E) Dismissal of Appeal for Failure to File a Brief

An applicant cannot file a petition to revive under37 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.  SeeTBMP §1203.02(a).  If the Board denies this motion, the applicant may file a petition to the Director under37 C.F.R. §2.146, asking the Director to reverse the Board’s order.  The petition must be filed by not later than thirty days after the issue 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.

1714.01(g) Request for Reconsideration of Denial of Petition to Revive

Under37 C.F.R §2.66(e), if a petition to revive is denied, the applicant may request reconsideration by:  (1) filing the request for reconsideration by not later than two months after the issue date of the decision denying the petition or two months after the date of actual knowledge of the decision denying the petition and not later than six months after the issue date of the decision where the applicant declares under37 C.F.R §2.20 or28 U.S.C. §1746 that it did not receive the decision; and (2) paying a second petition fee under37 C.F.R. §2.6.  SeeTMEP §1705.08. Petitioners should use the “Petition to the Director Under Trademark Rule 2.146” form available through the Trademark Electronic Application System (TEAS).

1715 Letters of Protest in Pending Applications

A letter of protest is an informal procedure created by and existing at the discretion of the USPTO, whereby third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark.  The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process.  SeeIn re BPJ Enter's., Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988);In re Pohn, 3 USPQ2d 1700 (Comm'r Pats. 1987).

Letters of protest are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”) to determine whether the submitted information should be given to the examining attorney for consideration.  To preserve the integrity and objectivity of the ex parte examination process, the letter of protest never becomes part of the application file and the Deputy Commissioner acts on the letter of protest without consulting with the examining attorney.  The Deputy Commissioner considers only the record in the application and the evidence submitted by the protestor.  BPJ Enter's., 7 USPQ2d at 1378.

If a third party attempts to contact an examining attorney regarding a letter of protest, the examining attorney will refer the third party to the Deputy Commissioner’s Office.  If an examining attorney receives a letter of protest, the letter will be referred to the Deputy Commissioner’s Office for consideration.  If the letter of protest is mistakenly entered in the record as a document received from the applicant, all evidence of that receipt will be expunged from the application record.

The Deputy Commissioner will accept a letter of protest filed before publication where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination.  The Deputy Commissioner will accept a letter of protest filed after publication 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 a clear error (seeTMEP §706.01) by the USPTO.  SeeTMEP §§1715.02 and1715.03–1715.03(e).

1715.01 Appropriate and Inappropriate Subjects to Be Raised in Letter of Protest

Only issues and evidence relevant to a ground for refusing registration during the ex parte examination of an application are appropriate subjects for a letter of protest. 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 merely present 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.  The USPTO also denies letters of protest that do not include factual, objective evidence.

1715.01(a) Issues Appropriate as Subjects of Letters of Protest

Appropriate subjects for letters of protest concern issues that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties.  The following are examples 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 byevidence of genericness or descriptiveness.  The evidence should be objective, independent, and factual evidence that the examining attorney may 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 letter of protest is accepted, 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 letter of protest is accepted, 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 claiming infringement based on the applicant’s use of the applied-for 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 the protestor must allege 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.  Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of the application that is the subject of the letter of protest.  If the letter of protest is accepted, the examining attorney is informed that a request for suspension has been received based on an alleged likelihood of confusion with a registered mark or prior-pending application that is the subject of pending litigation.  Copies of the relevant pleadings are placed in the record.
  • (4) A third party notifies the USPTO that registered marks are being used inappropriately in identifications of goods and services, mark descriptions, or other application data fields for particular applications.  (SeeTMEP §1402.09.)
  • (5) A third party notifies the USPTO of the existence of a subsequently filed U.S. application and alleges that the application contains a proper claim of priority under §44(d) to which the third party is entitled and that there is a likelihood of confusion between its mark and the mark in a prior-filed application that is the subject of the letter of protest.See TMEP §§1003.05 and1904.01(e).
  • (6) A third party notifies the USPTO of the serial number of an application filed under §66(a) with an earlier filing date or a priority claim to which the third party is entitled and that there is a likelihood of confusion between its mark and the mark in the application that is the subject of the letter of protest, even if the §66(a) application was not entered into the Trademark database at the time the application that is the subject of the letter of protest was examined.SeeTMEP §§1904.01(b) and1904.01(e).
  • (7) A third party notifies the USPTO that the foreign application relied upon as the basis for a claim of priority under §44(d) is not the first application filed in a treaty country and provides evidence of the existence of an earlier-filed foreign registration or pending foreign application.SeeTMEP §1003.01.
1715.01(b) Issues Inappropriate as Subjects of Letters of Protest

The following are examples of issues that arenot appropriate to raise in letters 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 letter-of-protest procedure should not be used as a means for expressing public opinion about a particular mark.  The trademark registration process is governed by statutory laws and federal regulations.  Public opinion may not be used to influence the application process; therefore, mass mailings by special-interest groups will not be made part of the record.  Letters of protest that raise the same objection to registration submitted by five or more different parties will be considered a mass mailing.
  • (4) A third party requests that prosecution of an application be suspended or refused because of pending litigation, but does not provide proof that the pending litigation includes grounds upon which the Office can suspend or refuse registration (e.g., the litigation does not involve a federally registered mark or prior-pending application of the protestor).
  • (5) A third party claims that the applicant has committed fraud against the USPTO.
1715.02 Letter of Protest Filed Before Publication
1715.02(a) Standard of Review for Letter of Protest Filed Before Publication

The Deputy Commissioner will accept a letter of protest filed before publication in all cases where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination.  The letter of protest will be reviewed and decided upon even if the examining attorney has not yet taken a first action in the application that is the subject of the letter of protest.  Upon acceptance of a letter of protest, the Deputy Commissioner will forward the relevant evidence (but not the letter of protest itself) to the examining attorney.  Letters of protest filed before publication will be denied if they merely present purely adversarial arguments, or are otherwise inappropriate.

A letter of protest filed before publication but reviewed by the Deputy Commissioner after publication will be reviewed under the pre-publication standard.  SeeTMEP §1715.02(b).

A letter of protest filed before publication will be dismissed as moot when the issue raised has already been considered by the examining attorney unless:  (1) the evidence provided by the protestor is significant additional evidence not currently of record in the application; or (2) the examining attorney clearly erred in his or her consideration of the issue and such error would result in the issuance of a registration in violation of the Trademark Act or applicable rules.  SeeTMEP §706.01 regarding clear error.

1715.02(b) Action by Examining Attorney Before Publication

Under the standard for accepting a pre-publication letter of protest, the examining attorney isnot required to issue a refusal as a result of the acceptance.  The examining attorney is required only to consider the evidence and make an independent determination whether to issue the requirement or refusal requested in the letter of protest.  The examining attorney need not inform the applicant that a letter of protest was accepted unless he or she is issuing a refusal based upon the information provided with the letter of protest.  The prosecution history of the application will reflect the acceptance of a letter of protest and a memorandum accepting the letter of protest and all relevant evidence will be added to the electronic file record.  If the examining attorney decides against issuing the requirement or refusal, the prosecution history of the application in the Trademark database will be updated to indicate “LETTER OF PROTEST EVIDENCE REVIEWED - NO FURTHER ACTION TAKEN.”

Letters of Protest Filed Before Publication but Accepted After Publication

In certain circumstances, a letter of protest filed before publication may not be reviewed by the Deputy Commissioner until after publication or during the period when the USPTO cannot withdraw the mark from publication.  Such letters are reviewed under the pre-publication standard.  If accepted and referred to the examining attorney after publication, the examining attorney is not required to issue a refusal or requirement as a result of the acceptance.  However, the examining attorney must consult with his or her managing attorney to determine whether a refusal or requirement is warranted.

If it is determined that a refusal or requirement must be made after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take action on the application.  SeeTMEP §1504.04.  If a notice of opposition has been filed, the examining attorney must request that the Board remand the application so that the examining attorney may take the specified action.  SeeTMEP §1504.05.

If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction over the application.  37 C.F.R. §2.84(a).  If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and a statement of use has not been filed, before issuing an Office action, he or she must contact the ITU/Divisional Unit to cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use.  SeeTMEP §1106.03.

If the letter of protest concerns a mark for which a statement of use has been filed, the examining attorney has jurisdiction over the application.  If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and no action has been taken on the statement of use, he or she must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest.  If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusal(s) or requirement(s) resulting from the letter of protest and incorporating by reference or restating any other outstanding refusal(s) or requirement(s).

1715.03 Letters of Protest Filed on the Date of Publication or After Publication
1715.03(a) Standard of Review for Letters of Protest Filed on the Date of Publication or After Publication

When a letter of protest is filed more than 30 days after the date of publication, the letter of protest will generally be denied as untimely.  SeeTMEP §1715.03(b).

When a letter of protest is filed on the date of publication or within 30 days after the date of publication, the letter of protest will be accepted only where publication of the mark constituted clear error, because the evidence included with the letter of protest establishes a prima facie case for refusal of registration.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1379 (Comm’r Pats. 1988). If evidence is not included, the letter of protest will be denied. The USPTO also denies letters of protest that merely present adversarial arguments that registration should be refused.  SeeTMEP §706.01 regarding clear error andTMEP §1715.04regarding the nature of relevant evidence.

Letters of protest regarding applications that will issue on the Supplemental Register must be submitted as soon as possible after the filing of the application. If the subject application enters the phase where it cannot be withdrawn from issue while consideration of the letter of protest is pending, the protest will be dismissed as untimely. The Office cannot consider a letter of protest after registration.

1715.03(b) Timely Filing of Letter of Protest

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 an application for registration by bringing to its attention evidence that may support a refusal of registration. 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 Enter's. Ltd., 7 USPQ2d 1375, 1378 (Comm’r Pats. 1988).  This applies to all applications, including intent-to-use applications under15 U.S.C. §1051(b).   In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476, 1478 (Comm’r Pats. 1994).  

Exceptions to the 30-day rule are made only in special circumstances.  In re Pohn, 3 USPQ2d 1700, 1703 (Comm’r Pats. 1987). For example, where the protestor could not earlier have obtained the information provided, a letter of protest may be accepted. Special circumstances may be established upon a showing that all of the evidence provided in the letter of protest was not in existence prior to publication, but to justify accepting such a letter of protest, the evidence must establish a prima facie case for refusal. However, the fact that a specimen was not of record prior to publication would not by itself be considered a special circumstance that would support allowing a letter of protest more than 30 days after publication.

If a letter of protest is filed against an application that is the subject of a request for extension of protection of an international registration under Trademark Act §66(a), in addition to meeting the timeliness standards set forth above for all letters of protest, it must also satisfy the timeliness requirements for refusals under Trademark Act §68(c) and Article 5 of the Madrid Protocol. In essence, a letter of protest against a §66(a) application must be filed before the 18-month deadline after the application was transmitted to the USPTO from the IB. A letter of protest will be dismissed if it is more than 18 months from the date the IB transmitted the protested application to the USPTO. SeeTMEP §1904.03(a).

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 appliesonly 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.  Once the mark has registered, the protestor’s remedy is to file a petition to cancel with the Board.  

1715.03(c) Jurisdiction of Application when a Letter of Protest Is Accepted After Publication

As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application.  TMEP §1504.04.  Therefore, upon acceptance of a letter of protest filed after publication and before issuance of the registration or notice of allowance, the Commissioner for Trademarks will restore jurisdiction of the application to the examining attorney.  The Commissioner will also restore jurisdiction when a letter of protest is accepted and an extension of time to file an opposition has been filed.  However, if an opposition has been commenced, the Board has jurisdiction over the application.TMEP §1504.02.  Therefore, upon request, the Board will generally restore jurisdiction and remand the application to the examining attorney.  SeeTBMP §215  for further information concerning the effect of a letter of protest when an opposition or request for extension of time to oppose has been filed. 

If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction.  37 C.F.R. §2.84(a).  If the Deputy Commissioner determines that the letter of protest should be accepted and a statement of use has not been filed, the USPTO will cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use.  Formal restoration of jurisdiction by the Commissioner is unnecessary.  TMEP §1106.03.   Furthermore, if a statement of use has been filed, the examining attorney has jurisdiction and must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest.  If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusals or requirements resulting from the letter of protest and incorporating by reference or restating any other outstanding refusals or requirements.

1715.03(d) Action by Examining Attorney After Publication

If the USPTO accepts a letter of protest filed on the date of publication or after publication, the examining attorney must issue the refusal or requirement, except in unusual circumstances.  The examining attorney must inform the applicant that a letter of protest was accepted.  If the notice of allowance was cancelled, the examining attorney must so inform the applicant.  Before issuing the Office action with the refusal or requirement, the examining attorney must have the action reviewed by his or her managing attorney.

However, the acceptance of the letter of protest is not a final determination by the USPTO that registration must be refused.  In unusual circumstances, the examining attorney may discover additional evidence that would justify approval of the application for registration after acceptance of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement.  If a letter of protest is accepted after publication and the examining attorney later determines that the mark should be approved for issuance of a registration or notice of allowance, the examining attorney must obtain permission from the Administrator for Trademark Policy and Procedure (“Administrator”) before approving the application for issue.  After conferring with the Administrator, an appropriate Note to the File must be entered in the record.

1715.03(e) Letter of Protest Does Not Stay or Extend Opposition Period

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 under15 U.S.C. §1063  with the Trademark Trial and Appeal Board.  SeeTBMP §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 at68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).

1715.04 Information for Parties Filing Letter of Protest

Third parties who object to the registration of a mark in a pending application must never contact an examining attorney directly in any way. Instead, they may file a letter of protest.

Letters of protest are not part of the official application record. In order to ensure their proper routing and processing, the Office requires that letters of protest be filed electronically via the Trademark Electronic Application System (TEAS). Letters of protest filed on paper will not be considered. A separate letter of protest, including relevant evidence, must be filed for each individual application that is being protested. SeeTMEP §§1715.04(a),(b)(b) regarding the nature and format of evidence to be included with a Letter of Protest. In TEAS, the Letter of Protest form can be accessed by clicking on the link entitled "Petition Forms" athttps://www.uspto.gov/Teas.

The letter of protest must include an email address for receiving an acknowledgment of the submission and a response accepting, denying, or dismissing the letter of protest.

Generally, the protestor should expect to receive the response within 60 days of filing the letter. The protestor should monitor the application status by checking the TSDR database athttps://tsdr.uspto.gov to determine whether an action accepting the letter of protest has been taken. This information will be in the public record only if the letter of protest is accepted. If a protestor has not received a response within three months of submitting a letter of protest, the protestor should contact the Petitions Office to confirm receipt of the letter of protest.

Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even after a letter of protest is accepted. Ongoing monitoring will ensure protestors the opportunity to take other action such as filing a notice of opposition. A protestor may file a second letter of protest after publication only if it raises a substantially different basis for filing the letter of protest or it provides significant additional evidence that clearly establishes a prima facie case for refusal of registration.

1715.04(a) Types of Evidence Appropriate for Letter of Protest

If the letter of protest is accepted, only evidence relevant to examination of the mark, or the registration numbers or pending application serial numbers raised as potential bars to registration, are forwarded to the examining attorney. If such evidence is not included, the letter of protest will be denied. SeeTMEP §1715.04(b) regarding the amount and format of evidence for letters of protest.

Note that a letter of protest should not include information or evidence concerning prior use, actual confusion, or fraudulent activity. These are not appropriate grounds for refusing registration during ex parte examination and must be addressed in an inter partes proceeding before the Trademark Trial and Appeal Board or a civil court.

The type of evidence relevant to the examination of the mark depends upon the nature of the objection raised. For example, if an objection is filed on the basis that a mark, or portion of a mark, is descriptive or generic, the protestor must submit factual, objective evidence, such as descriptive or generic use by others or excerpts from the dictionary showing the meaning of the mark. Merely submitting a list of web sites is not sufficient, and a letter of protest that only includes such a list will be denied. If third-party registrations are offered to show that the mark or a portion of the mark is descriptive, generic, or so commonly used that the public will look to other elements to distinguish the source of the goods or services, a mere list of the registrations or copy of a search report is not proper evidence of such registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic Trademark database of the USPTO) must be submitted.SeeTMEP §1207.01(d)(iii).

Generally, if an objection is based on a likelihood of confusion with existing federally registered marks or prior-pending applications, and the goods and/or services are identical, third parties need only submit the relevant registration or application serial number(s). If the goods and/or services are not identical, evidence of the relatedness of the goods and/or services must be included or the letter of protest generally will be denied. Such evidence may include advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or copies of registrations showing that such goods/services emanate from the same source. Note that a list of registration numbers, a chart containing the registration numbers and identified goods/services, or a copy of a search report is not proper evidence to show the relatedness of the goods or services in the registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. However, third-party registrations not based on use in commerce have little, if any, persuasive value and generally will not be forwarded to the examining attorney for consideration of the relatedness of the goods and services.SeeTMEP §1207.01(d)(iii). In addition, where a protestor wants to establish that its goods or services are related to those in the application(s) for which it is submitting the letter of protest, such evidence must pertain to the goods or services identified in the application. Evidence regarding how the protestor is using its mark for goods or services not identified in the registration or prior-pending application that form the basis for the letter of protest, or information regarding how the applicant is using or may use its mark in commerce in the future that varies from the scope of the identification in the application, is inappropriate and will not be forwarded to the examining attorney.

1715.04(b) Amount and Format of Evidence for Letter of Protest

The letter of protest should include only a simple statement of the proposed legal ground(s) for refusing registration or issuing a requirement, together with succinct, factual, objective evidence to support the refusal or requirement. It should not include arguments. The letter of protest process is intended to provide an opportunity for the protestor to efficiently and effectively provide relevant evidence in support of the proposed legal grounds for refusing registration identified in the letter of protest. It is inappropriate for the protestor to "dump" evidence and leave it to the Office to determine its possible relevance. Therefore, evidence submitted with the letter of protest should be succinct, not duplicative, and be limited to the most relevant evidence. Although an index is required for evidentiary submissions exceeding 75 pages, the Office strongly encourages the use of an index in all letters of protest that contain multiple forms of evidence because it aids in the consideration of the details of all the evidence provided by the protestor. Seeinfra, this section, for the requirements of an evidentiary index.

When the basis of the letter of protest is the existence of federally registered marks, or prior-pending applications, with which the protestor alleges that there is, or would be, a likelihood of confusion with the mark in the protested application, the protestor should not identify more than the five most relevant registrations or applications that could form a basis for refusal. If the protestor identifies more than five registrations or applications, only the first five identified registrations or applications will be considered.

Where numerous examples of third-party registrations or web pages exist regarding the relatedness of the goods and/or services, or to support any other refusal, it is not necessary to provide them all. The evidence of third-party registrations and/or use submitted with the letter of protest should be limited to the most relevant ten to fifteen examples. More than fifteen examples of evidence generally will be considered duplicative and unnecessary and may result in the letter of protest being denied without consideration on the merits. Copies of third-party registrations must come from the electronic records of the Office and show the current status and title of the registration. When submitting printouts from the Internet as evidence, the printout must include the date the evidence was published or accessed and the complete URL address of the website.SeeIn re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1593 (TTAB 2018);In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1586 (TTAB 2018);Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). Similarly, copies of pages from books or articles must include sufficient information regarding the source.

It should be a rare situation in which more than 75 pages of evidence is necessary to support the proposed legal grounds for refusal. Therefore, a letter of protest accompanied by more than 75 pages of evidence will be denied without consideration on the merits unless it complies with the following requirements: (1) the letter of protest provides a detailed explanation about why more than 75 pages of evidence is necessary and (2) the letter of protest is accompanied by a separate itemized index of the evidence.

The index must be provided on plain paper (not letterhead) via an attachment to the TEAS Letter of Protest form, and contain a concise factual description of each category or form of evidence included. If any item of evidence attached to the letter of protest consists of multiple pages, the index must specifically identify the page on which the evidence appears and must highlight the relevant portion of the page. To maintain the integrity of the ex parte examination process, the index must not identify the protestor or its representatives or contain any arguments or use subjective terms to identify or describe the evidence.

1715.04(c) Trademark Trial and Appeal Board Proceedings

As discussed above, if a letter of protest filed before publication is accepted, the relevant evidence submitted by the protestor is referred to the examining attorney. However, the examining attorney is not required to issue a refusal or requirement as a result of the acceptance. SeeTMEP §1715.02(b). In an ex parte proceeding regarding an application in which the record includes evidence submitted in a letter of protest filed before publication, if the examining attorney did not issue a refusal or requirement based on the evidence, the Trademark Trial and Appeal Board will not rely on the evidence in the Board proceeding because the applicant would not have the opportunity to rebut the evidence. In an inter partes proceeding, a party may not rely on such evidence unless it introduces the evidence during the assigned testimony period, either through testimony or by a notice of reliance, as appropriate.See, e.g.,37 C.F.R §2.122(b)(2) andTBMP §704.03(a).

1715.05 Requests for Copy of Letter of Protest

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 or fax the request to 571-273-0032.  All requests should be directed to the attention of the Deputy Commissioner for Trademark Examination Policy.  Upon review of the letter of protest material, the Deputy Commissioner will usually forward a copy of the letter of protest and its attachment to the requester.  The Deputy Commissioner will deny the request for a copy of the letter of protest only if the letter of protest itself 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 Deputy Commissioner, any part of the letter of protest or its attachments should be exempt from disclosure under FOIA, the matter will be forwarded to the Office of General Counsel of the USPTO for further review.

1715.06 Recourse After Denial of Letter of Protest

If the Deputy Commissioner denies a letter of protest, the protestor may pursue remedies otherwise available, such as an opposition proceeding, if the protestor 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 protestor may not file a request for reconsideration of the denial of the letter of protest with the Deputy Commissioner, because the request would unduly delay final disposition of the application.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1378 (Comm'r Pats. 1988).  However, the protester may petition the Director to review the Deputy Commissioner’s decision to deny the letter of protest under37 C.F.R. §2.146(a)(3).

The Deputy Commissioner has broad discretion in determining whether to accept a letter of protest.  In any petition to review the denial of a letter of protest, the Deputy Commissioner’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, 1702 (Comm’r Pats. 1987).

The protestor may not present additional evidence with the petition.  On petition, the Director will consider only the evidence that was properly before the Deputy Commissioner in acting on the letter of protest.  BPJ Enter's., 7 USPQ2d at 1378.