119 Papers and Fees Generally Not Returnable
119.01 Fee Refunds--General Rule
37 C.F.R. § 2.209 Refunds.
- (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a trademark application, appeal or other trademark filing for which the fee was paid, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. § 3332 and 31 C.F.R. part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
- (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 2.208(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
119.02 Submissions and Fees--Ex Parte Cases
After an application has received a filing date, submissions filed in connection therewith, including ex parte appeal papers, will not be returned. Similarly, once a petition for expungement or reexamination has been received, submissions filed in connection with the proceeding, if instituted, including ex parte appeal submissions, will not be returned. [ Note 1.] Use of ESTTA for filing with the Board is required. ESTTA will not accept untimely filings or filings with insufficient fees.
In the rare instance that the rules permit a paper-filed notice of appeal, if a notice of appeal to the Board from an examining attorney’s final refusal, or a notice of appeal after issuance of a final Office action in an expungement or reexamination proceeding, is late filed, the appeal will not be entertained. Instead, the application will be abandoned or the registration will be cancelled, as appropriate, the notice of appeal will be retained in the Board’s file; and any appeal fee submitted therewith will be refunded. If a notice of appeal is filed prematurely, the appeal will not be entertained, the notice of appeal will be retained in the Board’s file, the application or registration, as appropriate, will be returned to the examining attorney for further action, and applicant or registrant will be advised that if a timely appeal is subsequently filed in the case, any fee submitted with the premature appeal will be applied thereto. If no timely appeal is filed, applicant or registrant may request a refund of any such fee.
If a final refusal to register is withdrawn by the examining attorney, and the application is approved for publication, following which the applicant, not knowing that the application has been approved for publication, files a notice of appeal, the appeal will not be instituted, the notice of appeal will be retained in the Board’s file, and any appeal fee submitted therewith will be refunded. Similarly, if a final Office action in an expungement or reexamination proceeding is withdrawn, the registration will stand and the same procedure is in place as for a withdrawal of a refusal to register an application. In such a case, the notice of appeal, and appeal fee, are considered to have been filed in excess, rather than by change of purpose, since at the time of its filing, the appeal was unnecessary. If, however, the examining attorney withdraws the refusal to register, and approves the application for publication, or a final Office action is withdrawn for an expungement or reexamination proceeding, after an appeal to the Board has been filed, the appeal will be dismissed as moot, and the appeal fee will not be refunded (the appeal having been necessary at the time of its filing).
NOTES:
1. See 37 C.F.R. § 2.25 (Documents not returnable).
119.03 Submissions and Fees--Inter Partes Cases
In the rare instances that filings by paper are permitted under the rules, after an inter partes proceeding before the Board has been filed, paper submissions and other materials filed in connection therewith, normally will not be returned. Paper submissions filed by mail or hand delivery are scanned. After a short period of retention following filing and scanning, the Board disposes of the paper submissions. Following the conclusion of a proceeding, including any appeal period, any physical materials submitted will be disposed of by the Board in an appropriate manner. See TBMP § 806 (Termination of Proceeding). The Board will retain electronic versions of all submissions pursuant to USPTO document retention policies. Confidential submissions will remain sealed after termination of the proceeding. If, because of a defect in an opposition or a petition for cancellation filed with the Board, a proceeding is not instituted, any submitted fee will be refunded.
Use of ESTTA for filing with the Board is required. ESTTA will not accept untimely filings, filings with insufficient fees, or filings where any of the conditions identified below exist. However, if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, an opposition or petition for cancellation may be filed on paper (except for an opposition against a § 66(a) application), if accompanied by a Petition to the Director under 37 C.F.R. § 2.146 and the required fee. [ Note 1.] A Petition to the Director to accept paper submission of a petition to cancel a registration on the fifth year anniversary of the date of registration is subject to the requirements of 37 C.F.R. § 2.147(b), including the requirement for a declaration under 37 C.F.R. § 2.20 or 28 U.S.C. § 1746. [ Note 2.]
In the rare circumstances where filing by paper is permitted under the rules, no proceeding will be instituted, and any submitted filing fee will be refunded in the following circumstances:
- (1) If an opposition filed during an extension of time to oppose is in the name of someone other than the person who obtained the extension, and the opposer is unable to show, pursuant to 37 C.F.R. § 2.102(b), that it is in privity with the person who obtained the extension, or that the person in whose name the extension was requested was misidentified through mistake.
- (2) If an opposition or a petition for cancellation is filed prematurely (i.e., prior to publication of the subject mark in the Official Gazette for purposes of opposition, or prior to issuance of a registration of the subject mark, respectively, even if the registration has issued by the time of the Board’s action).
- (3) If an opposition is filed after the time for opposing has expired; or, is filed unsigned, and a signed copy is not submitted within the time limit set in the notification of this defect by the Board; or is filed without the required fee; or if the opposed application was abandoned before the opposition was filed. See TBMP § 218 (Abandonment of Application).
No proceeding will be instituted and the filing fee will not be refunded in the following circumstances:
- (1) If a party files an opposition or petition for cancellation in paper form without the Petition to the Director and the required fee under 37 C.F.R. § 2.146, or where applicable, 37 C.F.R. § 2.147, the proceeding will not be instituted and the filing fee will not be refunded.
- (2) If a party files an opposition or petition for cancellation in paper form accompanied by the Petition to the Director and the required fee and the required showing in the Petition to the Director is found to be insufficient, the proceeding will not be instituted and the filing fee will not be refunded.
Proceedings will be instituted, and the filing fee charged for a permitted filing in paper form in the following circumstances:
- (1) If a petition to cancel a Principal Register registration that is more than five years old does not allege any ground upon which such a registration can be cancelled (see Trademark Act § 14, 15 U.S.C. § 1064 ), the cancellation will be instituted and the Board will issue an order to show cause why the petition should not be dismissed for failure to state a claim. Note that when filing a petition for cancellation online using ESTTA, time-barred grounds for cancellation are not presented as an option.
- (2) If a petition for cancellation is filed with respect to a registration which, at the time of the filing of the petition, was not a "live" registration (e.g., the time for filing an affidavit of use under Trademark Act § 8, 15 U.S.C. § 1058, had expired, and no acceptable affidavit had been filed; the registration had already been cancelled as the result of a previous cancellation proceeding), the proceeding will be instituted, and then dismissed as moot.
- (3) If a party files an opposition or a petition for cancellation, and immediately thereafter changes its mind, and requests that the opposition or petition for cancellation not be instituted and that the papers be returned, the request ordinarily will be denied, and the proceeding will be instituted, unless there is a defect in the opposition or petition for cancellation which precludes institution, in which case no proceeding will be instituted, and any submitted fee will be refunded.
When the Board finds that it erroneously instituted a proceeding, the proceeding will be dismissed as a nullity. A refund will be issued in most circumstances involving dismissal as a nullity (e.g., institution of duplicate proceedings). All submissions will be retained by the Board under the assigned proceeding number, pursuant to the applicable retention policy.
NOTES:
1. 37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.101(b)(2); 37 C.F.R. §2.101(d); 37 C.F.R. §2.113(c)(1); 37 C.F.R. §2.111(c)(2).