§2.146 Petitions to the Director.
- (a) Petition may be taken to the Director in a trademark case:
- (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, Title 35 of the United States Code, or parts 2, 3, 6, and 7 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 parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or
- (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 sections 2, 3, 4, 5, 6, and 23 of the Act of 1946, are not 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) Unless a different deadline is specified elsewhere in this chapter, a petition under this section must be filed by not later than:
- (1) Two months after the issue date of the action, or date of receipt of the filing, from which relief is requested; or
- (2) Where the applicant or registrant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the action, or where no action was issued, the petition must be filed by not later than:
- (i) 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;
- (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 of a registration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired; or
- (iii) 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.
- (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 by not later than fifteen days after the issue date 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 by not later than fifteen days after 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 by not later than thirty days after the issue date of the order from which relief is requested. Any brief in response to the petition must be filed, with any supporting exhibits, by not later than fifteen days after 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) If the Director denies a petition, the petitioner may request reconsideration, if:
- (1) The petitioner 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 petitioner declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the decision; and
- (2) The petitioner pays a second petition fee under § 2.6.
- (1) The petitioner files the request by not later than:
[48 FR 23142, May 23, 1983; 48 FR 27225, June 14, 1983; 63 FR 48081, Sept. 9, 1998, effective Oct. 9, 1998; 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; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015; 80 FR 33170, June 11, 2015, effective July 11, 2015; 82 FR 29401, June 29, 2017, effective July 8, 2017; 84 FR 37081, July 31, 2019, effective Feb. 15, 2020]
§2.147 Petition to the Director to accept a paper submission.
- (a) Paper submission when TEAS is unavailable on the date of a filing deadline.
- (1) An applicant or registrant may file a petition to the Director under this section requesting acceptance of a submission filed on paper if:
- (i) TEAS is unavailable on the date of the deadline for the submission specified in a regulation in part 2 or 7 of this chapter or in a section of the Act; and
- (ii) The petition is timely filed, pursuant to § 2.197 or § 2.198, on the date of the deadline.
- (2) The petition must include:
- (i) (i) The paper submission;
- (ii) Proof that TEAS was unavailable on the date of the deadline;
- (iii) A statement of the facts relevant to the petition, supported by a declaration under § 2.20 or 28 U.S.C. 1746 that is 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;
- (iv) The fee for a petition filed on paper under § 2.6(a)(15)(i); and
- (v) Any other required fee(s) under § 2.6 for the paper submission.
- (1) An applicant or registrant may file a petition to the Director under this section requesting acceptance of a submission filed on paper if:
- (b) Certain paper submissions timely filed before the date of a filing deadline.
- (1) An applicant, registrant, or petitioner for cancellation may file a petition to the Director under this section, requesting acceptance of any of the following submissions that was timely submitted on paper and otherwise met the minimum filing requirements, but not processed or examined by the Office because it was not submitted electronically pursuant to § 2.21(a), § 2.23(a), or § 2.111(c)(1), and the applicant, registrant, or petitioner for cancellation is unable to timely resubmit the document electronically by the deadline:
- (i) An application seeking a priority filing date with a deadline under section 44(d)(1) of the Act;
- (ii) A statement of use filed within the last six months of the period specified in section 1(d)(2) of the Act;
- (iii) An affidavit or declaration of continued use or excusable nonuse with a deadline under section 8(a)(3) or section 71(a)(3) of the Act;
- (iv) A request for renewal of a registration with a deadline under section 9(a) of the Act;
- (v) An application for transformation of an extension of protection into a United States application with a deadline under section 70(c) of the Act; or
- (vi) A petition to cancel a registration under section 14 of the Act on the fifth year anniversary of the date of the registration of the mark.
- (2) The petition must be filed by not later than two months after the issue date of the notice denying acceptance of the paper filing and must include:
- (i) A statement of the facts relevant to the petition, supported by a declaration under § 2.20 or 28 U.S.C. 1746 that is 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;
- (ii) A copy of the relevant paper submission and proof that it was timely filed;
- (iii) Proof that a sufficient fee accompanied the original paper submission;
- (iv) The required fee(s) under § 2.6 for the paper submission; and
- (v) The relevant petition fee under § 2.6(a)(15).
- (1) An applicant, registrant, or petitioner for cancellation may file a petition to the Director under this section, requesting acceptance of any of the following submissions that was timely submitted on paper and otherwise met the minimum filing requirements, but not processed or examined by the Office because it was not submitted electronically pursuant to § 2.21(a), § 2.23(a), or § 2.111(c)(1), and the applicant, registrant, or petitioner for cancellation is unable to timely resubmit the document electronically by the deadline:
- (c) Petition under § 2.146. If the applicant or registrant is unable to meet the requirements under paragraphs (a) or (b) of this section for filing the petition, the applicant or registrant may submit a petition to the Director under § 2.146(a)(5) to request a waiver of § 2.21(a) or § 2.23(a).
- (d) This section does not apply to requirements for paper submissions to the Trademark Trial and Appeal Board except as specified in paragraph (b)(vi).
§2.148 Director may suspend certain rules.
In an extraordinary situation, when justice requires and no other party is injured thereby, any requirement of the rules in parts 2, 3, 6, and 7 of this chapter that is not a requirement of the Act may be suspended or waived by the Director.
[68 FR 14332, March 25, 2003, effective May 1, 2003; 84 FR 37081, July 31, 2019, effective Feb. 15, 2020]
§2.149 Letters of protest against pending applications.
- (a) A third party may submit, for consideration and entry in the record of a trademark application, objective evidence relevant to the examination of the application for a ground for refusal of registration if the submission is made in accordance with this section.
- (b) A party protesting multiple applications must file a separate submission under this section for each application.
- (c) Any submission under this section must be filed no later than 30 days after the date the application is published for opposition under section 12(a) of the Act and § 2.80 of this part. If the subject application cannot be withdrawn from issuance of a registration while consideration of the protest is pending, the protest may be considered untimely.
- (d)
- (1) If the letter of protest is filed before publication of the subject application, the evidence must be relevant to the identified ground(s) for refusal, such that it is appropriate for the examining attorney to consider whether to issue a refusal or make a requirement under the Act or this part.
- (2) If the letter of protest is filed on or within 30 days after the date of publication of the subject application, the evidence must establish a prima facie case for refusal on the identified ground(s), such that failure to issue a refusal or to make a requirement would likely result in issuance of a registration in violation of the Act or parts 2 or 7 of this section.
- (e) Filing a submission under this section does not stay or extend the time for filing a notice of opposition.
- (f) Any submission under this section must be made in writing, filed through TEAS, and include:
- (1) The fee required by § 2.6(a)(25);
- (2) The serial number of the pending application that is the subject of the protest;
- (3) An itemized evidence index that does not identify the protestor or its representatives, does not contain legal argument, and includes:
- (i) An identification of the documents, or portions of documents, being submitted as evidence. The submission may not total more than 10 items of evidence in support of a specified ground of refusal and more than 75 total pages of evidence without a detailed and sufficient explanation that establishes the special circumstances that necessitate providing more than 10 items of evidence per refusal ground or more than 75 total pages of evidence; and
- (ii) A concise factual statement of the relevant ground(s) for refusal of registration appropriate in ex parte examination that each item identified supports; and
- (4) A clear and legible copy of each item identified in the evidence index where:
- (i) Copies of third-party registrations come from the electronic records of the Office and show the current status and title of the registration;
- (ii) Evidence from the internet includes the date the evidence was published or accessed and the complete URL address of the website; and
- (iii) Copies of printed publications identify the publication name and date of publication.
- (g) Any submission under this section may not be entered or considered by the Office if:
- (1) Any part of the submission is not in compliance with this section;
- (2) The application record shows that the examining attorney already considered the refusal ground(s) specified in the submission; or
- (3) A provision of the Act or parts 2 or 7 of this chapter precludes acceptance of the submission.
- (h) If a submission is determined to be in compliance with this section, only the specified ground(s) for refusal and the provided evidence relevant to the ground(s) for refusal will be included in the application record for consideration by the examining attorney. An applicant should not reply to the entry into the application record of evidence entered under this section.
- (i) Any determination whether to include in an application record the ground(s) or evidence for a refusal of registration in a submission under this section is not petitionable.
- (j) A third party filing a submission under this section will not receive any communication from the Office relating to the submission other than acknowledgement that it has been received by the Office and notification of whether the submission is found to be compliant or non-compliant with this section. Communications with the third party will not be made of record in the application. The Office will not accept amendments to a non-compliant submission that was previously filed. Instead, a third party who previously filed a non-compliant submission may file another submission that meets the requirements of paragraph (f) of this section, provided the time period for filing a submission in paragraph (c) of this section has not closed.
- (k) The limited involvement of the third party ends with the filing of the submission under this section. The third party may not directly contact the examining attorney assigned to the application.
[85 FR 73197, Nov. 17, 2020, effective Jan. 2, 2021]