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1108 Requests for Extensions of Time to File the Statement of Use

Section 1(d) of the Trademark Act, 15 U.S.C. §1051(d), requires that a statement of use be filed within six months after the issuance of the notice of allowance, or before the expiration of a previously granted extension of time to file a statement of use. If the mark is not in use in commerce before the expiration of the six-month period following the issuance of the notice of allowance, the applicant must file a request for an extension of time to file a statement of use within the six-month period to avoid abandonment of the application. See 15 U.S.C. §1051(d)(4).

The first six-month extension may be requested without a showing of good cause. Up to four additional six-month extensions may be requested; each must include a showing of good cause. See 15 U.S.C. §1051(d)(2). Thus, the total time available for filing the statement of use may not be extended beyond thirty-six months from the issuance date of the notice of allowance. See 15 U.S.C. §1051(d).

To expedite processing, it is recommended that the applicant file the extension request through TEAS, at http://www.uspto.gov. Alternatively, an applicant may call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed paper form. The applicant may mail, fax, or hand-deliver the completed form to the USPTO. If the form is faxed, it must be accompanied by an authorization to charge the filing fee to a credit card or deposit account. The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf. If the extension request is filed though TEAS, payment must be made by credit card, deposit account, or EFT.

Paper forms may be delivered by hand or courier to the Trademark Assistance Center ("TAC"), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, 22314. TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.

Extension requests are processed by the ITU/Divisional Unit of the USPTO.

1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use

Under 15 U.S.C. §1051(d), the applicant must file an extension request within six months of the issuance date of the notice of allowance, or before the expiration of a previously granted extension; otherwise the application is abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.65(c), 2.88(h), 2.89(a)–(b).

Extensions of time are granted in six-month increments. 37 C.F.R. §2.89(c). Only one extension request may be filed in each six-month extension period that has been granted. The first extension request must be filed within six months of the date the notice of allowance issued. The second and subsequent extension requests must be filed before the expiration of the previously granted extension period. The total time available for filing the statement of use may not be extended beyond thirty-six months from the issuance date of the notice of allowance. 15 U.S.C. §§1051(d)(1)–1051(d)(2); 37 C.F.R. §2.89(e)(1). If a statement of use is not filed by the end of thirty-six months, the application will be abandoned and cannot be revived. 37 C.F.R. §2.88(h).

One extension request may be filed with or after a statement of use is filed (sometimes called an "insurance" extension request), if there is time remaining in the existing six-month period during which the statement of use was filed. Granting the extension request may not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. See TMEP §1108.03 regarding filing an "insurance" extension request.

An applicant will receive the full benefit of each extension period before a subsequent extension period will begin to run. The six-month period following the issuance of the notice of allowance, or any subsequent six-month extension period, will not be cut short by the grant of an extension request. No extension will be granted for more than six months. 37 C.F.R. §2.89(c).

Example: The following table presents an example of the complete timeline for filing five extension requests that meet the requirements of 15 U.S.C. §1051(d) and 37 C.F.R. §2.89.


Document	Issue/Filing Date	Period Covered
Notice of allowance	Issued June 7, 2010	Through December 7, 2010 (1^st 6 months provided by statute)
First extension request	File from June 8, 2010 through December 7, 2010	Through June 7, 2011
Second extension request	File from December 8, 2010 through June 7, 2011	Through December 7, 2011
Third extension request	File from June 8, 2011 through December 7, 2011	Through June 7, 2012
Fourth extension request	File from December 8, 2011 through June 7, 2012	Through December 7, 2012
Fifth and last extension request	File from June 8, 2012 through December 7, 2012	Through June 7, 2013
Statement of use	File from December 7, 2012 through June 7, 2013	N/A

The USPTO will notify the applicant of the grant or denial of an extension request, and of the reasons for a denial. However, failure to notify the applicant of the grant or denial of an extension request before the expiration of the requested extension does not relieve the applicant of the duty to file a statement of use or further extension request. 37 C.F.R. §2.89(g).

Under 37 C.F.R. §2.195(a)(2), an extension request filed through TEAS is considered to have been filed on the date the USPTO receives the transmission (Eastern Time), regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. When an extension request is filed electronically, TEAS almost immediately displays a "Success" page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the extension request, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

A paper extension request is considered timely if it is received in the Office by the due date or mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197. See TMEP §§305.02–305.02(h) and §§306.05–306.05(d) for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

1108.02 Requirements for Request for an Extension of Time to File a Statement of Use

First Extension Request

The first request for an extension of time to file a statement of use must include: (1) a written extension request from the applicant, before expiration of the six-month period following issuance of the notice of allowance; (2) the prescribed fee for each class of goods/services; and (3) a verified statement signed by the applicant or a person properly authorized to sign on behalf of the applicant (TMEP §804) that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. 37 C.F.R. §2.89(a).

Second and Subsequent Extension Requests

A second or subsequent extension request must be submitted before expiration of a previously granted extension of time and must include: (1) a written extension request from the applicant; (2) the prescribed fee for each class of goods/services; (3) 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, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (4) a showing of good cause, as required by 37 C.F.R. §2.89(d). 37 C.F.R. §2.89(b). Extensions of time under 37 C.F.R. §2.89(b) (i.e., second and subsequent extension requests) are granted in six-month increments and may not aggregate more than 24 months. 37 C.F.R. §2.89(c).

1108.02(a) Ownership

The party filing the extension request must be the owner of the application, i.e., the person or entity who is entitled to use the mark, at the time of filing. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3), 2.89(b)(3). If the party filing the extension request is not the owner of record, the request should include either a statement that the assignment or other document of title is recorded (or filed for recordation) in the Assignment Recordation Branch of the USPTO, or other evidence that the party filing the extension request is the owner of the application in accordance with 37 C.F.R. §§3.71(d) and 3.73(b). (Note: An application under §1(b) cannot be assigned before the applicant files an allegation of use, except to a successor to the applicant’s business, or portion of the business to which the mark pertains. See TMEP §501.01(a).)

If the extension request is filed by someone other than the owner of record and does not include the necessary evidence of ownership, the ITU staff will issue an Office action denying the request. If the party who filed the extension request was the owner at the time of filing, the applicant may submit evidence to establish the chain of title after expiration of the statutory filing period, within the time provided in the Office action advising the applicant of the denial.

To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Recordation Branch, and state in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20 that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1); TMEP §502.01. The USPTO recommends that requests to record documents with the Assignment Recordation Branch be filed through Electronic Trademark Assignment System ("ETAS") at http://etas.uspto.gov.

If an extension request is filed by the owner, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.

If the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is time remaining in the statutory period for filing the extension request. Cf. In re Colombo Inc., 33 USPQ2d 1530, 1531 (Comm’r Pats. 1994) (indicating that a statement of use filed by the wrong party cannot be corrected with a properly signed verification unless it is submitted within the statutory period for filing the statement of use). See TMEP §1108.05 for applicant's recourse if an extension request is denied.

If the applicant notifies the ITU/Divisional Unit during the processing of an extension request that an assignment or other document of title has been recorded, and there is a clear chain of title, the ITU staff will update the owner of record in the Trademark database. See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of a new owner, and TMEP §504 regarding the circumstances in which the "Ownership" field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.

1108.02(b) Verification

The extension request must be verified by someone properly authorized to sign on behalf of applicant. If the extension request is unsigned or signed by the wrong party, a properly signed substitute verification must be submitted before the expiration of the deadline for filing the statement of use. 37 C.F.R. §§2.89(a)(3), 2.89(b)(3). See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding persons properly authorized to sign on behalf of applicant. Generally, the USPTO will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.

If the extension request is not filed within one year after it is signed, the USPTO will require a substitute verification or declaration under 37 C.F.R. §2.20 that the applicant still has a bona fide intention to use the mark in commerce. 37 C.F.R. §2.89(h); see TMEP §804.03.

See TMEP §611 regarding signature on correspondence filed with the USPTO.

1108.02(c) Filing Fees

A filing fee sufficient to cover at least one class must be submitted within the statutory time for filing the extension request, or the request will be denied. 37 C.F.R. §§2.89(a)(2), 2.89(b)(2). In a multiple-class application, if the applicant files a fee sufficient to pay for at least one class, but insufficient to cover all the classes, the ITU staff will issue a notice of fee deficiency allowing the applicant thirty days to remit the amount by which the fee is deficient or specify the class(es) to be abandoned. If the USPTO does not receive a timely response to a fee deficiency letter, the USPTO will apply the fees paid to the lowest-numbered class(es) in ascending order, and will delete from the application the remaining class(es) of goods/services not covered by the submitted fees. See 37 C.F.R. §§2.89(a)(2), 2.89(b)(2).

If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the fee for at least one class of goods/services must be submitted before the expiration of the statutory filing period. See 37 C.F.R. §§2.89(a)(2), 2.89(b)(2). If the extension request was not accompanied by an authorization to charge deficient fee(s) to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, and the applicant does not resubmit the fee before expiration of the statutory deadline, the extension request will be denied and the application will be abandoned. See 37 C.F.R. §§2.89(a)(2), 2.89(b)(2). In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(12). See TMEP §405.06 regarding payments that are refused.

1108.02(d) Identification of Goods/Services

The applicant must identify or reference the goods/services on or in connection with which the applicant still has a bona fide intention to use the mark in commerce in the extension request. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3), 2.89(b)(3). The goods/services identified in the extension request must conform to those identified in the notice of allowance. 37 C.F.R. §2.89(f). If the applicant wants to delete goods/services from the application, the applicant should clearly specify those goods/services to be deleted.

The applicant may incorporate by reference the goods/services listed in the notice of allowance. See 37 C.F.R. §2.89(f). This is advisable where applicant intends to retain all the goods/services identified in the notice of allowance, to avoid the possibility that goods/services may be inadvertently omitted. Thus, the applicant may specify the goods/services by referring to "those goods/services identified in the notice of allowance" or "those goods/services identified in the notice of allowance except . . . [followed by a listing of the goods/services to be deleted]." Id.

If the applicant lists the goods/services with specificity in the extension request, and omits any goods/services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted. 37 C.F.R. §2.89(f). The applicant may not thereafter request that the goods/services be reinserted in the application. Id. In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing an extension request for the omitted goods/services.

If an applicant files an extension request on a pre-printed paper form provided by the USPTO and fails to check either of the boxes available for identifying the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU staff will assume that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with all the goods/services identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89. In re Omega-3 Mktg., Inc., 35 USPQ2d 1158, 1159 (Comm’r Pats. 1994).

If the applicant lists goods/services to be deleted and the result would be to delete all of the goods/services in the notice of allowance, or if the applicant fails to identify or incorporate by reference any goods/services, the USPTO will presume this was a clerical error. Applicant will be allowed to correct the mistake. The ITU staff will issue a letter noting that no goods/services were specified or incorporated by reference in the extension request, and granting applicant thirty days in which to submit a verified statement clarifying the goods/services. However, if by mistake the applicant lists goods/services to be deleted and removal does not result in the deletion of all goods/services, the goods/services specifically listed will be deleted and may not later be reinserted.

See TMEP §1107 regarding amendments to the identification of goods/services filed between the issuance of the notice of allowance and the filing date of the statement of use.

1108.02(e) Bona Fide Intention to Use the Mark in Commerce

A request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with the goods/services identified in the notice of allowance. 37 C.F.R. §2.89(a)(3), 2.89 (b)(3). This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request. 15 U.S.C. §1051(d)(2). In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991).

The USPTO will accept an allegation of actual use in commerce as meeting the requirement for an allegation of bona fide intention to use the mark in commerce in an extension request. In re Vitamin Beverage Corp., 37 USPQ2d 1537, 1539 (Comm’r Pats. 1995).

See TMEP §1101 for additional information about the requirement for an allegation of the applicant’s bona fide intention to use the mark in commerce.

1108.02(f) Good Cause Required for Extensions Beyond the First Six-Month Extension

No showing of good cause is required in the first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a), 2.89(b)(4), 2.89(d). The showing of good cause must include a statement of the applicant’s ongoing efforts to make use of the mark in commerce on or in connection with each of the goods/services covered by the extension request. 37 C.F.R. §2.89(d). Efforts to use the mark in commerce may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities, such as efforts to secure funding. Id. In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. Id. Examples of activities that would not be acceptable to show good cause include physical illness or disability and lack of staff and resources due to economic downturn.

A mere assertion that the applicant is engaged in ongoing efforts is not enough; the efforts must be specified. In re Comdial Corp., 32 USPQ2d 1863, 1864 (Comm’r Pats. 1993). However, the USPTO will not require a detailed explanation or evidence in a showing of good cause. The statement concerning good cause only has to refer to the types of activities listed in the rule or similar types of activities. For example, the applicant may simply state that the applicant is engaged in manufacturing and promotional activities.

The applicant may also satisfy the requirement for a showing of good cause by asserting that the applicant believes it has made valid use of the mark in commerce and (1) is in the process of preparing a statement of use but may need additional time to file it, or (2) is concurrently filing a statement of use but is requesting the extension of time to file a statement of use in case the USPTO finds the original statement of use to be fatally defective. However, such a statement will be accepted only once as a statement of the applicant’s ongoing efforts to make use of the mark in commerce. Repetition of these same allegations in a subsequent extension request is not, without more, deemed to be a statement of the applicant’s ongoing efforts, as required by 37 C.F.R. §2.89(d). In re SPARC Int’l Inc., 33 USPQ2d 1479, 1480 (Comm’r Pats. 1993), partially overruled on other grounds, by In re El Taurino Rest., Inc., 41 USPQ2d 1220 (Comm'r Pats. 1996). If these allegations are repeated, the extension request will be denied.

If an extension request does not include a showing of good cause, or if the showing of good cause in an extension request is deemed insufficient, the ITU staff will issue an Office action denying the extension request but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause). This showing may be submitted even if the statutory period for filing the statement of use has expired.

1108.03 Only One Extension Request May Be Filed with or After a Statement of Use

An applicant may file a request for an extension of time to file a statement of use with a statement of use, or after filing the statement of use if there is time remaining in the existing six-month period in which the statement of use was filed, provided that granting the extension request would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). The applicant may not request any further extensions of time after this request. Id.

The purpose of such a request, sometimes called an "insurance" extension request, is to secure additional time to correct any deficiency in the statement of use that must be corrected before the expiration of the deadline for filing the statement of use. See TMEP §1109.16(a) regarding the deficiencies that must be cured before expiration of the statutory filing period. Consider the following examples:

Example: If the notice of allowance was issued February 6, 2009, and the applicant files a statement of use on August 6, 2009 (but does not file an "insurance" extension request), the applicant has until August 6, 2009 to cure any deficiency that must be corrected before the expiration of the statutory period for filing the statement of use. After August 6, 2009, it is too late to file an "insurance" extension request, because no time remains in the existing six-month period in which the statement of use was filed.

Example: If the notice of allowance was issued February 6, 2009, the applicant could file a statement of use, together with an "insurance" extension request, on or before August 6, 2009. If the extension request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.

Example: If the notice of allowance was issued February 6, 2009, and the applicant filed a statement of use on February 7, 2009, the applicant could file an "insurance" extension request within the time remaining in the existing six-month period in which the statement of use was filed, i.e., on or before August 6, 2009. If the request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.

Example: If the notice of allowance was issued February 6, 2009, and the applicant files a request for an extension of time to file a statement of use on August 6, 2009, the applicant has until February 6, 2010 to file a statement of use or a second extension request. If the applicant files a statement of use, together with an "insurance" extension request, on or before February 6, 2010, and the extension request is granted, the applicant would have until August 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.

An "insurance" extension request filed with or after a statement of use must meet all relevant requirements, including payment of the applicable fee. If the request is not the first request for an extension of time, and thus a showing of good cause is required, the applicant may satisfy the requirement for a showing of good cause by asserting that the applicant believes that it has made valid use of the mark in commerce, as evidenced by the statement of use, but that if the statement of use is found to be fatally defective, the applicant will need additional time to correct defects or file a substitute statement of use. 37 C.F.R. §2.89(e)(2); TMEP §1108.02(f).

The filing fee for the "insurance" extension request will not be refunded, even if the extension is not needed to perfect the statement of use.

In a multiple-class application, the "insurance" extension request must cover all of the classes stated in the notice of allowance. If the applicant intends to submit an "insurance" extension request for less than all of the classes, the applicant must either (1) identify in the extension request the classes being deleted or (2) submit a request to divide for those classes that will retain the §1(b) filing basis and a separate extension request for those classes. A request to divide may be filed electronically using TEAS. See TMEP §§1110–1110.11(a) regarding a request to divide an application and TMEP §1110.07 regarding dividing an application when the statement of use is due. If the applicant does not comply with these requirements, the ITU staff will contact the applicant to clarify the deficiencies and process the "insurance" extension request accordingly. If the ITU staff issues a letter regarding the deficiencies and the applicant fails to respond within the time permitted, the "insurance" extension request will not be processed.

If the applicant files an "insurance" extension request in conjunction with a statement of use, and the applicant submits fees sufficient for one but not both filings, the USPTO will apply the fees as follows: (1) if there is enough money to cover the extension request, the USPTO will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the USPTO will apply the fees to the statement of use. See TMEP §1110.07 regarding the application of fees when an applicant submits a request to divide along with an extension request and statement of use.

If an applicant files an "insurance" extension request with a statement of use and the extension request is defective, the ITU staff will deny the request and advise the applicant of the reason for denial. If the statement of use meets the minimum requirements for examination on the merits, the ITU staff will then forward the application to the examining attorney. If there is time remaining in the current period for filing a statement of use, the applicant may file a substitute extension request.

See TMEP §1108.03(a) regarding the processing of an extension request after a statement of use has been referred to an examining attorney.

1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney

Under 37 C.F.R. §2.89(e)(1), an applicant may file a request for an extension of time to file a statement of use after filing a statement of use if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. See TMEP §1108.03.

When an extension request is filed after the statement of use has been referred to the examining attorney, the request will be referred to the examining attorney. The USPTO will not examine the extension request unless the applicant needs the extension to perfect the statement of use.

If the examining attorney issues a requirement or refusal based on the statement of use, the examining attorney should note in the Office action that the extension request is being referred to the ITU/Divisional Unit for processing of the extension request. The filing of such an extension request is not in itself a proper response to an outstanding Office action, and does not extend the time for responding to an outstanding Office action. See TMEP §§1109.16(c) and (d). If the examining attorney does not issue a requirement or refusal based on the statement of use, the USPTO will not take formal action on the extension request.

The USPTO will not refund the filing fee for the extension request, even if the extension is not needed to perfect the statement of use.

1108.04 Recourse After Denial of Extension Request

If an extension request is denied, the applicant will be notified of the reason(s) for denial.

To avoid abandonment of the application, the applicant must meet the minimum requirements for filing the extension request on or before the deadline for filing a statement of use.

If the USPTO denies the extension request because the applicant failed to meet minimum filing requirements on or before the statutory deadline, and there is time remaining in the applicant’s existing period for filing the statement of use, the applicant may file the statement of use and/or a substitute extension request. Otherwise, the applicant’s only recourse after denial of the extension request is a petition under 37 C.F.R. §§2.89(g) and 2.146, or a petition to revive under 37 C.F.R. §2.66, if appropriate. See TMEP §1108.05 regarding petitions that may be filed after the denial of an extension request.

The minimum filing requirements that must be satisfied before expiration of the statutory deadline are: (1) a verified statement, signed by 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).

1108.05 Petitions from Denial of Request for an Extension of Time to File a Statement of Use

If an extension request is denied, and there is no time remaining in the statutory filing period, the application is abandoned. Applicant’s recourse is as follows:

Petition to Revive Under 37 C.F.R. §2.66. If the applicant unintentionally failed to comply with the minimum filing requirements (see TMEP §1108.04 for a list of these requirements), the applicant may file a petition to revive under 37 C.F.R. §2.66, within two months of the issuance date of the denial of the extension request, and must include the fee required by 37 C.F.R. §2.6. See TMEP §§1714–1714.01(g) regarding petitions to revive.
Request for Reinstatement. If the applicant has proof that shows on its face that the extension request met the minimum requirements when filed, the applicant may request reinstatement within two months of the issuance date of the denial of the extension request. For example, if the extension request is denied due to the omission of a fee, and the applicant has proof that shows on its face that the fee was included, the applicant may request reinstatement. No fee is required for the reinstatement request. The request should be directed to the ITU/Divisional Unit. See TMEP §1712.01 regarding the types of evidence that support reinstatement.
Petition Under 37 C.F.R. §2.146. The applicant may file a petition under 37 C.F.R. §2.146 if the applicant believes that the ITU staff’s denial of an extension request was improper (e.g., if applicant contends that the extension request actually met the requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89, but was improperly denied). 37 C.F.R. §§2.89(g), 2.146(a)(3). For example, the applicant might file a petition claiming that the denial was improper if the ITU staff denied an extension request because the applicant’s showing of good cause was insufficient, but applicant believes that the showing was sufficient. The applicant must file the petition within two months of the issuance date of the denial of the extension request, and must include the fee required by 37 C.F.R. §2.6. 37 C.F.R. §§2.146(c), (d). See TMEP Chapter 1700 regarding petitions.

Filing a petition or request for reinstatement does not stay the time for filing a statement of use or further extension request. See 37 C.F.R. §2.89(g). However, if the applicant fails to file a statement of use or further request(s) for extension(s) of time to file a statement of use during the pendency of a petition, the applicant will be given an opportunity to perfect the petition by paying the fee(s) for each missed extension request and filing the last extension request, or statement of use, that should have been filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762, 1763-64 (Comm’r Pats. 1997).

If a petition is granted, the term of the requested six-month extension will run from the date of the expiration of the previously existing six-month period for filing a statement of use. 37 C.F.R. §2.89(g).

No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(e)(1).