1109.02    Review for Compliance with Minimum Filing Requirements

Statements of use are reviewed by the ITU/Divisional Unit to determine whether they are timely and in compliance with the minimum filing requirements listed in 37 C.F.R. §2.88(c).  If the statement of use is untimely, either because it is premature or late, the ITU staff will notify the applicant in writing that the statement of use cannot be considered because it is untimely, and refund the filing fee.

If the statement of use is timely, but does not comply with one or more of the minimum filing requirements of 37 C.F.R. §2.88(c), the ITU staff will notify the applicant in writing of the defect and advise the applicant that the USPTO will not examine the statement of use on the merits unless the applicant corrects the defect before expiration of the deadline for filing a statement of use.  37 C.F.R. §2.88(d).

If the statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title.  See TMEP §1109.10 for further information regarding ownership issues.

If the applicant does not correct the deficiency before the expiration of the statutory deadline, the application will be abandoned.  37 C.F.R. §2.88(k). In such a case, the USPTO will not refund the filing fee.

The applicant may not withdraw the statement of use and return the application to the previous status of awaiting filing of the statement of use, even if the statement of use fails to meet the minimum filing requirements.  37 C.F.R. §2.88(f); TMEP §1109.17.  However, in limited circumstances, an applicant may file an "insurance" extension request with or after the filing of a statement of use, if there is time remaining in the existing six-month period in which the statement of use was filed, to gain more time to comply with the statutory requirements for filing the statement of use.  37 C.F.R. §2.89(e)(1).  See TMEP §§1108.03 and 1109.16(c) for further information.

1109.02(a)    Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements

If the ITU staff determines that a statement of use does not meet the minimum filing requirements of 37 C.F.R. §2.88(c), and there is no time remaining in the statutory filing period, the 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, the applicant may file a petition to revive under 37 C.F.R. §2.66 within two months of the issuance date of the notice of abandonment.  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 statement of use met the minimum requirements when filed, the applicant may request reinstatement, within two months of the issuance date of the notice of abandonment.  For example, if the statement of use is rejected due to the omission of a specimen or fee, and the applicant has proof that shows on its face that the missing element was included, the applicant may request reinstatement.  No fee is required.  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.  If the applicant contends that the statement of use met the minimum requirements of 37 C.F.R. §2.88(c) when filed but was improperly denied by the ITU staff, and the applicant does not have proof that shows on its face that the statement of use was complete when filed (see TMEP §1712.01), the applicant may file a petition under 37 C.F.R. §2.146(a)(3), asking the Director to review the action of the ITU staff.  The petition must be filed within two months of the issuance date of the notice of abandonment, and must include the petition fee required by 37 C.F.R. §2.6, proof in the form of an affidavit or declaration under 37 C.F.R. §2.20, and any available evidence showing that the statement of use was complete when filed. 37 C.F.R. §2.146(c), (d). See TMEP §1705.03 regarding proof of facts on petition.

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).