1712.02    Reinstatement of Registrations Cancelled or Expired

1712.02(a)    Request for Reinstatement Due to Office Error

A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that a USPTO error caused a registration to be cancelled or expired due to failure to file a §8 affidavit, §71 affidavit, §9 renewal application, or a response to an examining attorney's Office action refusing to accept an affidavit or renewal application.  There is no fee for a request for reinstatement.  However, to ensure proper routing and processing, the USPTO prefers that the request be filed electronically using the "Petition to the Director under Trademark Rule 2.146" form, which can be accessed at http://www.uspto.gov/trademarks/teas/petition_forms.jsp. Although a petition fee is required in order to file the form, it will be refunded if USPTO error is found.

The following are examples of situations where the USPTO may reinstate a cancelled or expired registration:

  • (1) The registrant presents proof that a proper affidavit or renewal application was timely filed through TEAS, in the form of a copy of a TEAS "Success" page confirming receipt of the document ( see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
  • (2) There is an image of a timely filed affidavit, renewal application, or response to Office action in TICRS.
  • (3) The timely filed affidavit, renewal application, or response to Office action is found in the USPTO.
  • (4) The registrant supplies a copy of the affidavit, renewal application, or response to Office action, with proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197  (for the specific requirements for providing proof, see TMEP §305.02(f)).
  • (5) The registrant supplies a copy of the affidavit, renewal application, or response to Office action, with proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of transmission requirements of 37 C.F.R. §2.197  (for the specific requirements for providing proof, see TMEP §306.05(d)).
  • (6) The registrant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the registrant specifically refers to the §8 affidavit, §71 affidavit, §9 renewal application, or response ( see TMEP §303.02(c)).
  • (7) The registrant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20  attesting to the contents of the envelope.
  • (8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check).  The registrant must submit an affidavit or declaration under 37 C.F.R. §2.20  attesting to the contents of the original filing.
  • (9) The USPTO sent an Office action to the wrong address due to a USPTO error, i.e., the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the issuance date of the action.

Generally, where there is proof that a registration was cancelled solely due to USPTO error, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status of the affidavit or renewal application.  

The Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059   or affidavit of use of a registered mark under 15 U.S.C. §1058.    Checkers Drive-In Rest's. Inc. v. Comm'r of Patents & Trademarks, 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995); In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984).  Therefore, if the registrant did not timely file a §8 affidavit, §71 affidavit, or §9 renewal application, a request to reinstate a cancelled or expired registration will be dismissed, regardless of the reason for the delay, as the Director lacks authority to grant such a petition.

1712.02(b)    Formal Petition

If a registrant failed to timely respond to an Office action refusing to accept a §8 affidavit, §71 affidavit, or §9 renewal application due to an extraordinary situation, but the registrant does not have the proof of USPTO error that would support a request for reinstatement, the registrant may file a formal petition under 37 C.F.R. §§2.146(a)(5)  and 2.148  to accept a late response.  Pursuant to 37 C.F.R. §2.146(d), the petition must be filed within two months of the issue date of the cancellation notice.  If the registrant did not receive the cancellation notice, or no cancellation notice was issued, the petition must be filed within two months of the date the Trademark database was updated to indicate that the registration expired or was cancelled.   See 37 C.F.R. §2.146(d). See TMEP §§1705.04 and 1705.05 regarding timeliness and diligence.

The unintentional delay standard of 37 C.F.R. §2.66  does not apply to registered marks.   TMEP §1714.01(f)(ii)(D).  Under 37 C.F.R. §§2.146(a)(5)  and 2.148, the Director may waive any provision of the rules that is not a provision of the statute, only when an extraordinary situation exists, justice requires, and no other party is injured.   See TMEP §1708.  The failure to receive an Office action is considered an extraordinary situation that justifies a waiver of a rule.  Therefore, if the registrant did not receive an Office action refusing to accept an affidavit or renewal application, but the registrant does not have proof that non-receipt was due to USPTO error ( see TMEP §1712.02(a), paragraph 9), the registrant may file a formal petition under 37 C.F.R. §2.146. The petition should include a clear statement that the Office action was not received and either a complete response to the Office action, to expedite acceptance of the maintenance filing, or a request that the Office action be reissued.

As noted in TMEP §1708, the Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059   or affidavit of use of a registered mark under 15 U.S.C. §1058.   Therefore, if the registrant did not timely file a §8 affidavit, §71 affidavit, §9 renewal application, a petition to extend or waive the statutory deadline will be dismissed, regardless of the reason for the delay.

If a registrant contends that a proper affidavit or renewal application was timely filed, but the registrant does not have proof that the affidavit or renewal application was received in the USPTO before the due date, the Director will not grant a petition to accept the affidavit or renewal application.

Similarly, if a registrant files a premature affidavit or renewal application, and does not file a newly executed affidavit or renewal application within the statutory filing period (which includes the grace period), the Director will not grant a petition to accept the premature affidavit or renewal application.   See TMEP §§1604.04(a) and 1606.03(a).