§2.61-§2.69 EXAMINATION OF APPLICATION AND ACTION BY APPLICANTS

§2.61 Action by examiner.

(a) Applications for registration, including amendments to allege use under section 1(c) of the Act, and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
(b) The Office may require the applicant to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the application.
(c) Whenever it shall be found that two or more parties whose interests are in conflict are represented by the same attorney, each party and also the attorney shall be notified of this fact.

[30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb. 9, 1972; 54 FR 37592, Sept. 11, 1989; 77 FR 30197, May 22, 2012, effective June 21, 2012]

§2.62 Procedure for filing response.

(a) Deadline. The applicant’s response to an Office action must be received within six months from the date of issuance.
(b) Signature. The response must be signed by the applicant, someone with legal authority to bind the applicant (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)(2).
(c) Form. Responses must be filed through TEAS, transmitted by facsimile, mailed, or delivered by hand, as set out in § 2.190(a). Responses sent via email will not be accorded a date of receipt.

[Amended 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015]

§2.63 Action after response.

(a) Repeated non-final refusal or requirement. After response by the applicant, the examining attorney will review all statutory refusals and/or requirement(s) in light of the response.
- (1) If, after review of the applicant’s response, the examining attorney issues a non-final action that maintains any previously issued substantive refusal(s) to register or repeats any requirement(s), the applicant may submit a timely response to the action under § 2.62(a).
- (2) If, after review of the applicant’s response, the examining attorney issues a non-final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond to such repeated requirement(s) by filing a timely petition to the Director for relief from the repeated requirement(s) if the subject matter of the repeated requirement(s) is appropriate for petition to the Director (see § 2.146(b)).
(b) Final refusal or requirement. Upon review of a response, the examining attorney may state that the refusal(s) to register, or the requirement(s), is final.
- (1) If the examining attorney issues a final action that maintains any substantive refusal(s) to register, the applicant may respond by timely filing:
  - (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to overcome any substantive refusal(s) to register, and comply with any outstanding requirement(s), maintained in the final action; or
  - (ii) An appeal to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142.
- (2) If the examining attorney issues a final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond by timely filing:
  - (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to comply with any outstanding requirement(s) maintained in the final action;
  - (ii) An appeal of the requirement(s) to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142; or
  - (iii) A petition to the Director under § 2.146 to review the requirement(s), if the subject matter of the requirement(s) is procedural, and therefore appropriate for petition.
- (3) Prior to the expiration of the time for filing an appeal or a petition, the applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusal(s) and/or comply with any outstanding requirement(s). Filing a request for reconsideration does not stay or extend the time for filing an appeal or petition. The Office will enter amendments accompanying requests for reconsideration after final action if the amendments comply with the rules of practice in trademark cases and the Act.
- (4) Filing a request for reconsideration that does not result in the withdrawal of all refusals and requirements, without the filing of a timely appeal or petition, will result in abandonment of the application for incomplete response, pursuant to § 2.65(a).
(c) If a petition to the Director under § 2.146 is denied, the applicant will have six months from the date of issuance of the Office action that repeated the requirement(s), or made it final, or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement(s). A requirement that is the subject of a petition decided by the Director subsequently may not be the subject of an appeal to the Trademark Trial and Appeal Board.
(d) If an applicant in an application under section 1(b) of the Act files an amendment to allege use under § 2.76 during the six-month response period after issuance of a final action, the examining attorney will examine the amendment. The filing of such an amendment does not stay or extend the time for filing an appeal or petition.

[48 FR 23214, May 23, 1983; 68 FR 14332, March 25, 2003, effective May 1, 2003; 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015]

§2.64 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.

[82 FR 29401, June 29, 2017, effective July 8, 2017]

§2.65 Abandonment.

(a) An application will be abandoned if an applicant fails to respond to an Office action, or to respond completely, within six months from the date of issuance. A timely petition to the Director pursuant to §§ 2.63(a) and (b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a response that avoids abandonment (see § 2.63(b)(4)).
- (1) If all refusals and/or requirements are expressly limited to certain goods and/or services, the application will be abandoned only as to those goods and/or services.
- (2) When a timely response by the applicant is a bona fide attempt to advance the examination of the application and is a substantially complete response to the examining attorney’s action, but consideration of some matter or compliance with a requirement has been omitted, the examining attorney may grant the applicant thirty days, or to the end of the response period set forth in the action to which the substantially complete response was submitted, whichever is longer, to explain and supply the omission before the examining attorney considers the question of abandonment.
(b) An application will be abandoned if an applicant expressly abandons the application pursuant to § 2.68.
(c) An application will be abandoned if an applicant in an application under section 1(b) of the Act fails to timely file either a statement of use under § 2.88 or a request for an extension of time for filing a statement of use under § 2.89.

[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989; 68 FR 14332, March 25, 2003, effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015]

§2.66 Revival of abandoned applications.

(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) 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) 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) InStatement 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) 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 37 C.F.R §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.

[31 FR 5261, Apr. 1, 1966, as amended at 54 FR 37592, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 68 FR 14332, March 25, 2003, effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 82 FR 29401, June 29, 2017, effective July 8, 2017]

§2.67 Suspension of action by the Patent and Trademark Office.

Action by the Patent and Trademark Office may be suspended for a reasonable time for good and sufficient cause. The fact that a proceeding is pending before the Patent and Trademark Office or a court which is relevant to the issue of registrability of the applicant’s mark, or the fact that the basis for registration is, under the provisions of section 44(e) of the Act, registration of the mark in a foreign country and the foreign application is still pending, will be considered prima facie good and sufficient cause. An applicant’s request for a suspension of action under this section filed within the 6-month response period (see § 2.62) may be considered responsive to the previous Office action. The first suspension is within the discretion of the Examiner of Trademarks and any subsequent suspension must be approved by the Director.

[37 FR 3998, Feb. 24, 1972; 68 FR 14332, March 25, 2003, effective May 1, 2003]

§2.68 Express abandonment (withdrawal) of application.

(a) Written document required. An applicant may expressly abandon an application by filing a written request for abandonment or withdrawal of the application, signed by the applicant, someone with legal authority to bind the applicant (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)(2). A request for abandonment or withdrawal may not subsequently be withdrawn.
(b) Rights in the mark not affected. Except as provided in § 2.135, the fact that an application has been expressly abandoned shall not affect any rights that the applicant may have in the mark set forth in the abandoned application in any proceeding before the Office.

[38 FR 7958, Mar. 27, 1973, as amended at 54 FR 34897, Aug. 22, 1989; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015]

§2.69 Compliance with other laws.

When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37592, Sept. 11, 1989]