1714.01    Procedural Requirements for Filing Petition to Revive

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s Office action are set forth in 37 C.F.R. §2.66(b).  See TMEP §§1714.01(a)–(a)(ii).  The procedural requirements for filing a petition to revive an application abandoned for failure to timely file a statement of use or request for extension of time to file a statement of use are set forth in 37 C.F.R. §2.66(c).   See TMEP §§1714.01(b)-(c).

When a petition does not meet the procedural requirements of 37 C.F.R. §2.66, a paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner that the petition does not meet the requirements of the rule, and grant the petitioner 30 days to supplement the petition by submitting the missing element(s).  If the petitioner does not submit the necessary information or fees within the time allowed, the petition will be denied.

If a petition to revive filed through TEAS is automatically granted by the electronic system and it is subsequently determined that the petition does not meet the procedural requirements of 37 C.F.R. §2.66, a paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner that the granting of the petition has been rescinded because the petition does not meet the requirements of the rule.  The petitioner will be granted 30 days to supplement the petition by submitting the missing element(s).  If the petitioner does not submit the necessary information or fee(s) within the time allowed, the petition will be denied.

1714.01(a)    Failure to Timely Respond to an Examining Attorney’s Office Action

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/trademarks/teas/index.jsp.

1714.01(a)(i)    Response to Nonfinal Office Action

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s nonfinal Office action are listed in 37 C.F.R. §2.66(b).  The petition must include all of the following:

  • (1) The petition fee required by 37 C.F.R. §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.  The statement does not have to be verified; and
  • (3) Unless the applicant alleges that it did not receive the Office action, the applicant’s proposed response to the Office action.  

If the petition states that applicant did not receive the Office action, and the petition is granted, the USPTO will issue a new Office action and provide the applicant with a new response period, or, if all issues previously raised remain the same, after reviving the application, the USPTO will send a notice to the applicant directing the applicant to view the previously issued Office action on the TSDR portal on the USPTO website at http://tsdr.uspto.gov/, and provide the applicant with a new six-month period in which to file a response.

See TMEP §718.02(a) regarding a petition to revive a portion of an application that was partially abandoned. See TMEP §1714.01 regarding situations in which a petition to revive fails to meet the procedural requirements of 37 C.F.R. §2.66(b)  (e.g., when there is no allegation that the applicant did not receive the Office action, but the petition does not include a proposed response).

1714.01(a)(ii)    Response to Final Office Action

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s final Office action are the same as listed in TMEP §1714.01(a)(i).   See 37 C.F.R. §2.66(b).  

However, when a final action has issued, the petition must include a response, as defined in 37 C.F.R. §2.63(b)(1)-(2), unless the applicant alleges that it did not receive the final Office action. See 37 C.F.R. §2.66(b)(3). Specifically, an applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board ( see TMEP §§1501–1501.07); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2); see TMEP §715.01. In some cases, an amendment requesting registration on the Supplemental Register or registration under 15 U.S.C. §1052(f)  may also be an appropriate response to a final refusal of registration on the Principal Register. See TMEP §§714.05(a)(i), 816.04, 1212.02(h)

If the petition states that applicant did not receive the final action, and the petition is granted, the USPTO will issue a new final action and provide the applicant with a new response period. If all issues previously raised remain the same, the USPTO will send a notice to the applicant directing the applicant to view the previously issued final action on the TSDR portal on the USPTO website at http://tsdr.uspto.gov/, and provide the applicant with a new six-month period in which to file a response.

If the applicant received the Office action, and no response was filed within the statutory response period, a late notice of appeal may be submitted with the petition. 15 U.S.C. §1062(b)(2). However, if the applicant previously filed timely a request for reconsideration or a response to the Office action that does not overcome all outstanding refusals and satisfy all outstanding requirements, a late appeal will not be accepted on petition. That is because the filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. § 2.63(b)(3); TMEP §715.03.

If the petition does not include a response to the final action or claim that the final action was not received, the petition will be treated as incomplete.  The applicant will be given an opportunity to perfect the petition by submitting the required response (e.g., a notice of appeal) or claim of non-receipt.  If the applicant does not submit a proper response or claim of non-receipt within the time allowed, the petition will be denied.

See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.

1714.01(b)    Failure to File a Statement of Use or Extension Request - Notice of Allowance Received

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov.

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c).   If the applicant received the notice of allowance, the petition must include all of the following:

  • (1) The petition fee required by 37 C.F.R. §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 (37 C.F.R. §2.66(c)(2) ).  The statement does not have to be verified;
  • (3) Either a statement of use under 37 C.F.R. §2.88or a request for an extension of time to file a statement of use under 37 C.F.R. §2.89( 37 C.F.R. §2.66(c)(4) ); and
  • (4) The required fees for the number of extension requests that the applicant should have filed if the application had never been abandoned (37 C.F.R. §2.66(c)(3)).

Example 1:  If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned.  If a petition to revive is filed July 23, 2009, with a statement of use, the petition must include:  (1) the fee for the statement of use; (2) the fee for the extension request that was due July 14, 2009; and (3) the petition fee.

Example 2:  If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned.  If a petition to revive is filed January 23, 2010, without a statement of use, the petition must be accompanied by:  (1) the second extension request that was due January 14, 2010, with the filing fee therefor; (2) the fee for the first extension request that was due July 14, 2009; and (3) the petition fee.  If the petition is granted, a statement of use or third extension request will be due July 14, 2010.

Unless a statement of use is filed with or before the petition, the applicant must file any further requests for extension of time to file a statement of use that become due while the petition is pending, or file a statement of use (37 C.F.R. §2.66(c)(5) ).   See TMEP §1714.01(b)(i).

  Example:  If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned.  If a petition to revive is filed January 2, 2010, without a statement of use, the petition must include:  (1) the first extension request that was due July 14, 2009, with the filing fee therefor; and (2) the petition fee.  In addition, if the petition is pending, the applicant must submit by January 14, 2010 either: (1) a statement of use (with the required fee), or (2) a second extension request (with the required fee) before the petition can be granted.

The USPTO will notgrant a petition to revive an intent-to-use application if granting the petition would extend the period for filing the statement of use beyond thirty-six months after the issuance date of the notice of allowance.  15 U.S.C. §§1051(d)(1)   and (2); 37 C.F.R. §2.66(d).  In these cases, the petition will be dismissed, and the petition fee will be refunded.

NOTE:  Multiple Basis Applications.  In a multiple-basis application, if in response to a notice of abandonment the applicant elects to delete the intent-to-use basis and only keep the basis or bases to which the notice of allowance does not pertain, then the applicant does not have to file a statement of use or extension request with the petition, or file any further extension requests while the petition is pending.  Instead, applicant may submit with the petition a request to delete the intent-to-use basis and proceed to registration on the alternative basis for registration.

See TMEP §§ 1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.

1714.01(b)(i)    Applicant Must File Statement of Use or Further Extension Requests During Pendency of a Petition

Filing a petition to revive does not stay the time for filing a statement of use or further request(s) for extension of time to file a statement of use.  When a petition is granted, the term of the six-month extension that was the subject of the petition runs from the date of the expiration of the previously existing deadline for filing a statement of use.  37 C.F.R. §2.89(g).  Thus, a petitioner must either file a statement of use or file additional extension requests as they become due during the pendency of a petition.

If the applicant fails to file a statement of use or further request(s) for extension of time to file the statement of use while the petition is pending, the USPTO will give the applicant an opportunity to perfect the petition by paying the fees for each missed extension request and filing a copy of the last extension request, or statement of use, that should have been filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762, 1764 (Comm’r Pats. 1997).

Please note that an applicant may file a petition to revive and an extension request through TEAS.  However, if the applicant files a statement of use with the petition to revive form in TEAS, the TEAS form will require submission of the fee(s) for the missing extension request(s).  See TMEP §§1108–1108.05 regarding extension requests, and TMEP §§1109–1109.18 regarding statements of use.

1714.01(c)    Notice of Allowance Not Received

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov.

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c).   If the applicant did not receive the notice of allowance, the petition must include the following:

  • (1) The petition fee required by 37 C.F.R. §2.6; and
  • (2) A statement, signed by someone with firsthand knowledge of the facts, that the applicant did not receive the notice of allowance, and 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.  The statement does not have to be verified.

If the applicant did not receive the notice of allowance, it is not necessary to file a statement of use or request for an extension of time to file a statement of use, or the fees for the number of extension requests that would have been due if the application had never been abandoned.  37 C.F.R. §§2.66(c)(3)  and (4).  If the petition is granted, the USPTO will cancel the original notice of allowance and issue a new notice, giving the applicant a new six-month period in which to file a statement of use or extension request. However, if the petitioner files an extension request with a petition that alleges nonreceipt of the notice of allowance, the USPTO will presume that the applicant wants to maintain the issue date of the original notice of allowance and will process the extension request.

Similarly, if the petitioner files a statement of use and the required fees for any missing extension requests with a petition that alleges nonreceipt of the notice of allowance, the USPTO will presume that the applicant intends to maintain the issue date of the original notice of allowance and will process the statement of use.

If the petitioner files a statement of use with a petition that alleges nonreceipt of the notice of allowance but does not include the required fees for any missing extension requests, the USPTO will give the petitioner the option of:  (1) having the notice of allowance cancelled and reissued, the statement of use not processed, and the filing fee for the statement of use refunded; or (2) paying the additional filing fees for the extension requests that would have been due if the application had never been abandoned, so that the statement of use can be processed. If the applicant files the statement of use with the petition to revive form in TEAS, the TEAS form will require submission of the fees for the missing extension requests.

1714.01(d)    Timeliness and Diligence

Under 37 C.F.R. §2.66(a), a petition to revive an abandoned application must be filed:  (1) within two months of the issuance date of the notice of abandonment; or (2) within two months 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.  A petition to revive an application as to goods/services/classes deleted (abandoned) for failure to respond to a partial refusal or requirement must be filed:  (1) within two months of the issuance date of the examiner’s amendment setting forth the changes that will be made in the identification of goods/services; or (2) within two months of actual knowledge of the issuance of the examiner’s amendment, provided the application has not registered, if the applicant did not receive the examiner’s amendment and the applicant was diligent in checking the status of the application.

See TMEP §718.02(a) regarding partial abandonment, §1705.04 regarding petition timeliness, and TMEP §1705.05 regarding an applicant’s duty to exercise due diligence in monitoring the status of an application.

If a petition is untimely, or if the applicant was not diligent, the USPTO will deny the petition and refund the petition fee.  To be considered diligent, the applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration.  37 C.F.R. §§2.66(a)(2)  and 2.146(i)(1).

The applicant may file a petition to revive before the applicant receives the notice of abandonment.

1714.01(e)    Signed Statement that Delay Was Unintentional

Under 37 C.F.R. §§2.66(b)(2), 2.66(c)(2), and 2.193(e)(4), a petition to revive must include a statement, signed by someone with firsthand knowledge of the facts, that the delay in responding to the Office action or notice of allowance was unintentional.  Generally, it is not necessary to explain the circumstances that caused the unintentional delay and the statement does not have to be verified.

However, if the applicant is alleging that non-receipt of an Office action or notice of allowance caused the unintentional delay, this should be stated; no further explanation is necessary.

The USPTO will generally not question the applicant’s assertion that the delay in responding to an Office action or notice of allowance was unintentional unless there is information in the record indicating that the delay was in fact intentional.  An example of an intentional delay is when an applicant intentionally decides not to file a response or intent-to-use document because it no longer wishes to pursue registration of the mark, but later changes its mind and decides that it does wish to pursue registration.

The person signing the statement must have firsthand knowledge of the facts, but it is not necessary to specifically state in the petition that the signatory has firsthand knowledge.  Generally, the USPTO will not question the signatory’s authority to sign the statement.  However, any response to an Office action accompanying the petition ( see TMEP §1714.01(a)(i)-(ii)) must be signed by a qualified practitioner, or by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) if the applicant is not represented by a qualified practitioner.  37 C.F.R. §§2.62(b), 2.193(e)(2), and 11.18(a).  See TMEP §§ 611.03(b) and 712–712.03 regarding signature of responses to Office actions, 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.

See also TMEP §1705.07 regarding signature of petitions, and TMEP §611.01(c) regarding signature of documents filed through TEAS.

1714.01(f)    Applicability of Unintentional Delay Standard

1714.01(f)(i)    Situations Where the Unintentional Delay Standard Applies

The unintentional delay standard of Trademark Rule 2.66 applies only to the "failure" to respond to an examining attorney’s Office action or a notice of allowance.   See 15 U.S.C. §§1051(d)(4),  1062(b).  This includes the failure to meet minimum filing requirements for a statement of use or request for an extension of time to file a statement of use.

The minimum filing requirements for a statement of use are listed in 37 C.F.R. §2.88(c):   (1) the fee for at least a single class; (2) at least one specimen or facsimile of the mark as used in commerce; and (3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant stating that the mark is in use in commerce.

For a trademark or service mark, the minimum filing requirements for a request for extension of time to file a statement of use are:  (1) a verified statement, signed by the applicant or a person properly authorized to sign on behalf of the applicant, that the applicant has a continued bona fide intention to use the mark in commerce; (2) an identification of the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services.   In re El Taurino Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996); TMEP §1108.04. See TMEP §1108.04 for the minimum filing requirements for an extension request for a collective mark or certification mark.

An applicant who fails to meet the minimum filing requirements for a statement of use or request for an extension of time to file a statement of use has, in effect, not filed the statement of use or extension request.  Therefore, if the failure to meet the minimum filing requirements was unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66.

An applicant may also file a petition to revive under 37 C.F.R. §2.66  if the applicant timely files a notice of appeal from an examining attorney’s final refusal, but unintentionally fails to include the appeal fee required by 15 U.S.C.  §1070.

1714.01(f)(ii)    Situations Where the Unintentional Delay Standard Does Not Apply

The unintentional delay standard of Trademark Rule 2.66 applies only to the failure to respond to an examining attorney’s Office action or a notice of allowance.  15 U.S.C. §§1051(d)(4)   and 1062(b).

1714.01(f)(ii)(A)    Examining Attorney’s Holding of Abandonment for Failure to File Complete Response to Office Action

The unintentional delay standard of 37 C.F.R. §2.66  does not apply to an application that is abandoned for filing an incomplete response to an examining attorney’s Office action.  Incomplete responses to examining attorneys’ Office actions are governed by 37 C.F.R. §2.65(a)-(a)(2), which gives the examining attorney discretion to grant an applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response pursuant to 37 C.F.R. §2.65(a)(2).  If the examining attorney holds the application abandoned for failure to file a complete response to an Office action, the applicant may file a petition to the Director to review the examining attorney’s action under 37 C.F.R. §2.146.  The Director will reverse the examining attorney’s action only if there is clear error or an abuse of discretion.   See TMEP §1713.

A request for reconsideration of a final refusal ( see TMEP §§715.03–715.03(c) ) that does not meet all legal requirements and is not accompanied by a proper notice of appeal will be treated as an incomplete response to the final Office action.  If the examining attorney denies the request for reconsideration, the time for filing a notice of appeal runs from the issuance date of the final action.   TMEP §715.03(c).  If the time for appeal has expired and the application is abandoned for an incomplete response, the applicant may not file a petition to revive under 37 C.F.R. §2.66. The applicant may file a petition to the Director to review the examining attorney’s action under 37 C.F.R. §2.146. See TMEP §1713 regarding petitions to reverse a holding of abandonment for an incomplete response.

1714.01(f)(ii)(B)    Examining Attorney’s Refusal of Registration on Ground That Applicant Did Not Meet Statutory Requirements Before Expiration of Deadline for Filing Statement of Use

If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use, as set forth in 37 C.F.R. §2.88(c), the applicant may file a petition to revive under 37 C.F.R. §2.66.  However, the applicant may not file a petition to revive under 37 C.F.R. §2.66  if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(c), but the examining attorney later refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use (15 U.S.C. §1051(d);  37 C.F.R. §2.88(b) ) on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use).  The applicant may appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board.  See TMEP §1109.16(a) regarding the requirements that must be met within the statutory period for filing the statement of use.

1714.01(f)(ii)(C)    Goods/Services Omitted from Statement of Use or Request for Extension of Time to File a Statement of Use

If the applicant lists the goods/services/classes in a statement of use or request for an extension of time to file a statement of use, and omits any goods or services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted.  The applicant may not thereafter request that the goods/services be reinserted in the application.  37 C.F.R. §§2.88(b)(1)(iv), 2.89(f); TMEP §§1108.02(d), 1109.13.  In these situations, the applicant may not file a petition under 37 C.F.R. §2.66  claiming unintentional delay in filing a statement of use or extension request for the omitted goods/services.

1714.01(f)(ii)(D)    Registered Marks

Trademark Rule 2.66 applies only to abandoned applications, not to registered marks.  If a registrant fails to timely respond to an Office action regarding a §8 affidavit, §71 affidavit, or §9 renewal application, the registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(5)  and 2.148  to waive a rule and accept a late response.  However, the Director will waive a rule only in an extraordinary situation, where justice requires, and no other party is injured.  The Director has no authority to waive a statutory requirement.  See TMEP §1708 regarding the waiver of rules. Failure to receive the post registration Office action may be considered an extraordinary situation.

See TMEP §§1712.02–1712.02(b) regarding requests to reinstate cancelled or expired registrations.

1714.01(f)(ii)(E)    Dismissal of Appeal for Failure to File a Brief

An applicant cannot file a petition to revive under 37 C.F.R. §2.66  if an application is abandoned because the Board dismisses an appeal for failure to file a brief.  In this situation, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief.   See TBMP §1203.02(a).  If the Board denies this motion, the applicant may file a petition to the Director under 37 C.F.R. §2.146, asking the Director to reverse the Board’s order.  The petition must be filed within thirty days of the issuance date of the Board’s order.  37 C.F.R. §2.146(e)(2).  The Director will reverse the Board’s action only if the Board clearly erred or abused its discretion.

1714.01(g)    Request for Reconsideration of Denial of Petition to Revive

Under 37 C.F.R. §2.66(f), if a petition to revive is denied, the applicant 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.   See TMEP §1705.08.