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 by 37 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 denied.

1705.02   Petition Fee

A petition must be accompanied by the fee required by 37 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.  See 37 C.F.R. §2.146(c).

A petition fee will be waived only in an extraordinary situation (see TMEP §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).  See TMEP §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.  Under 37 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 under 37 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 (see TMEP §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 issuance 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 -- two months (37 C.F.R. §2.146(d));
  • Denial of a request for an extension of time to file a statement of use -- two months (37 C.F.R. §2.89(g));
  • 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 rejection -- six months from date of issuance of Office action maintaining a refusal of the affidavit (37 C.F.R. §2.165(b); see TMEP §§1604.18–1604.18(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); see TMEP §§1606.14–1606.14(a));
  • Petition to revive -- two months from date of issuance of notice of abandonment or two months from the date of actual knowledge of the abandonment, if the applicant did not receive the notice of abandonment, and the applicant was diligent in checking the status of the application every six months in accordance with §2.146(i) (37 C.F.R. §2.66(a); see TMEP §§1705.05, 1714–1714.01(g));
  • Petition to revive goods/services/classes deleted for failure to respond to a partial refusal or requirement - two months from date of issuance of the examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained or two months from 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, if the applicant did not receive the examiner’s amendment and the applicant was diligent in checking the status of the application every six months in accordance with §2.146(i) (37 C.F.R. §2.66(a); see TMEP §§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(b));
  • Request for reconsideration of decision on petition -- two months from date of issuance (37 C.F.R. §§2.66(f)(1), 2.146(j)(1)).

If the rules do not provide an express deadline, the petition must be filed within two months of the date of issuance of the action from which relief is requested, under 37 C.F.R. §2.146(d).

If there is no "issuance of an action," the two-month "catchall deadline" of 37 C.F.R. §2.146(d) runs from the date of actual knowledge, or the date of the phone call or other communication that prompts the filing of the petition.  See TMEP §1705.05 regarding diligence. The two-month deadline of 37 C.F.R. §2.146(d) also applies where the petition alleges that the petitioner did not receive the action that prompts the filing of the petition, running from the date of the petitioner’s actual knowledge of said action.

The time limits set forth in the rules are strictly enforced.  Petitions filed after the expiration of the deadlines are denied 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 to 37 C.F.R. §§2.146(a)(5) and 2.148.  See TMEP §1708 regarding waiver of rules.

The petition fee is refunded when a petition is denied as untimely.

Petitions filed using the certificate of mailing and certificate of transmission procedures of 37 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 of 37 C.F.R. §2.197(a)(1) (see TMEP §§305.02, 306.05–306.05(d)).

See TMEP §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.  When a petitioner seeks to reactivate an application or registration that was abandoned, cancelled, or expired due to the loss or mishandling of documents sent to or from the USPTO, the USPTO may deny the petition if the petitioner was not diligent in checking the status of the application or registration, even if the petitioner can show that the USPTO actually received documents, or declares that a notice from the USPTO was never received by the petitioner.  37 C.F.R. §2.146(i).  

The required showing of diligence is necessary to protect third parties who may be harmed by the removal and later reinsertion of an application or registration into the USPTO’s database.  For example, a third party may have searched USPTO records and begun using a mark because the search showed no earlier-filed conflicting marks, or an examining attorney may have searched USPTO records and approved a later-filed application for a conflicting mark because the examining attorney was unaware of the earlier-filed application.

The USPTO generally processes applications, responses, and other documents in the order in which they are received.  Since it is reasonable to expect some notice from the USPTO about a pending matter within six months of the filing or receipt of a document, a party who has not received the expected written action or telephone call from the USPTO within that time frame should be on notice that the filing may have been lost.  The party awaiting notification has the burden of inquiring as to the cause of the delay, and requesting corrective action in writing when necessary.

To be considered diligent, a petitioner must:

  • Check the status of a pending application every six months between the filing date of the application and issuance of a registration;
  • Check the status of a registration every six months after filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Trademark Act ("§9 renewal application"), until the petitioner receives notice that the affidavit or renewal application has been accepted; and
  • Promptly request corrective action in writing where necessary.

37 C.F.R. §2.146(i).  See notice at 68 FR 55748 (Sept. 26, 2003).

Applicants and registrants should check the status on each six‑month anniversary of the filing of an application for registration, §8 or §71 affidavit, or §9 renewal application to avoid abandonment or cancellation and to ensure that they meet the diligence requirement.  For example, if an application was filed on October 1, 2009, the applicant should check the status on May 1, 2010, November 1, 2010, and on each six-month anniversary thereafter, until a registration is issued.

However, to provide applicants, registrants, and their attorneys with flexibility in docketing deadlines for both responses and status checks, an applicant or registrant will meet the diligence requirement if the applicant or registrant checks the status within six months of the filing or receipt of a document for which further action by the USPTO is expected.

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 at http://tsdr.uspto.gov/, which is 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 at (571) 272-9250 or (800) 786-9199 to determine 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.  Written status inquiries are discouraged, because they may delay processing of the application or registration.  

If a status inquiry reveals that a document sent to the USPTO was not received, 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 in writing.  37 C.F.R. §2.146(i)(3).  Petitions should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.  Requests for reinstatement should be directed to the paralegals in the Office of the Deputy Commissioner for Trademark Examination Policy, the supervisory legal instruments examiner in the law office, or the supervisor of the ITU/Divisional Unit or Post Registration Section.  See TMEP §§1712 et seq. regarding requests for reinstatement.

Where a registrant has proof that a USPTO error caused a registration to expire or be cancelled due to failure to file a §8 affidavit, §71 affidavit, §9 renewal application, or a response to an examiner’s Office action refusing to accept an affidavit of use or excusable nonuse or a renewal application, the registrant may file a request for reinstatement.  See TMEP §1712.02(a) regarding the types of proof of USPTO error that will support a request for reinstatement.  Generally, where there is proof that a registration was cancelled solely due to a USPTO error, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status of the §8 affidavit or renewal application.  However, if a registrant receives a written notice of cancellation, or has actual notice that a registration was cancelled, the USPTO will deny the request for reinstatement as untimely if it was not filed:  (1) within two months of the issuance date of the cancellation notice; or (2) within two months of actual notice of cancellation, if the registrant did not receive a written cancellation notice.  37 C.F.R. §2.146(d).

A request to reinstate an application abandoned due to USPTO error (see TMEP §1712.01) must be timely (see TMEP §1705.04) and may be denied if the applicant was not diligent in monitoring the status of the application.  37 C.F.R. §§2.66(a)(2), 2.146(i).

1705.06   Stay or Suspension of Pending Matters

37 C.F.R. §2.146(g)  (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(b) and 2.65 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 under 37 C.F.R. §2.146(g), or when 37 C.F.R. §§2.63(b) and 2.65 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 under 37 C.F.R. §2.146, the examining attorney must not 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).  See TMEP §1714.01(b)(i).

1705.07   Signature of Petition

A petition to the Director under 37 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 to 37 C.F.R. §11.14 ("qualified practitioner").  37 C.F.R. §2.146(c).  See TMEP §602 regarding persons authorized to represent a party before the USPTO, and TMEP §§611.06–611.06(h) for guidelines on persons with legal authority to bind various types of legal entities.

Petitions to the Director under 37 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.  See TMEP §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 under 37 C.F.R. §2.66 (see TMEP §§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 under 37 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 (see TMEP §§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 party, the staff attorney or paralegal reviewing the petition will follow the procedures in TMEP §§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

Under 37 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 under 37 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

Under 15 U.S.C. §§1071(a)(1), (b)(1) and 37 C.F.R. §§2.145(a), (c), 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.  See In 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 two months from the issuance date of the decision.  37 C.F.R. §2.145(d)(1).  Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.