216 Inadvertently Issued Registration

Sometimes a registration is issued, mistakenly, from an application that, at the time of such issuance, is the subject of an unexpired extension of time to oppose, or a timely opposition. These circumstances are examples of where a registration is referred to as "inadvertently issued."

The Board is without authority, within the context of either an extension of time to oppose, or an opposition proceeding, to cancel an inadvertently issued registration and restore it to application status. Rather, it is the Director who has such authority, and the Director exercises this authority with caution. [ Note 1.] A registration will ordinarily be deemed to have been issued inadvertently if a notice of opposition or a request for extension of time to oppose was timely and properly filed but the registration nonetheless issued. [ Note 2.] The Director will not find that a registration issued inadvertently if (1) the notice of opposition was defective in some manner, and (2) that defect prevented the Office from identifying the application in question, and from withholding the issuance of a registration. [ Note 3.]

Accordingly, when it comes to the attention of the Board that a registration has issued inadvertently from an application that is the subject of an unexpired extension of time to oppose, the Board will issue an order approving the extension of time, if appropriate, or, if already approved, noting that potential opposer has been granted an extension of time to oppose until a specified date, and advising potential opposer that if it wishes to preserve its right to oppose should the registration be cancelled as inadvertently issued, potential opposer must continue to file further timely requests for extensions of time to oppose, or it must file the notice of opposition. The Board will then notify the Director. The Director, in turn, may either cancel the registration as inadvertently issued, and restore it to application status, or decline to do so.

The inadvertent issuance of the registration will be considered good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but it will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication. The Board will not suspend the time for filing an opposition or subsequent extension of time to oppose pending cancellation of an inadvertently-issued registration. See TBMP § 209.01.

If a registration that issued inadvertently during an extension of time to oppose is not cancelled by the Director and restored to application status, any opposition that may have been filed by the potential opposer will not be instituted, and any submitted opposition fee will be refunded. The potential opposer’s substantive remedy, under the statute, will be through a petition to cancel the registration.

If a timely opposition is filed while the matter of the registration is pending before the Director, the Board will acknowledge the filing of the notice or opposition and inform the parties that the opposition will be instituted if and when the inadvertently issued registration has been cancelled. A copy of the Board’s action will be sent to both parties.

If the Director cancels and restores the registration to application status, the opposition will be instituted and appropriate dates will be set. If the Director declines to cancel the registration, the opposition will not be instituted and the fee will be refunded.

If a registration issues inadvertently during such time as a timely request for an extension of time to oppose or an opposition is pending, the Director normally will cancel the registration as inadvertently issued, and restore it to application status. However, if the opposition has already been finally determined in applicant’s favor when the inadvertent issuance is discovered, applicant may either keep the registration, or request that it be cancelled as inadvertently issued, restored to application status, and then reissued.

NOTES:

1. In re Siemens Aktiengesellschaft, 34 USPQ2d 1862, 1863 (Comm’r Pat. 1995) (inherent authority to cancel an inadvertently issued registration "is to be exercised with caution.") (citing Mc Lachlan Touch Inc., 6 USPQ2d 1395, 1396 (Comm’r 1987)).

2. Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., 60 USPQ2d 1703, 1704 (Comm’r 2000).

3. Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., 60 USPQ2d 1703, 1704 (Comm'r 2000) (where notice of opposition misidentified the serial number of opposed application, Director declined to cancel registration, finding that error which caused the registration to issue was made by opposer, not as result of inadvertent act by the Office).