1712.01    Reinstatement of Applications Abandoned Due to USPTO Error

37 C.F.R. 2.64  Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error.

  • (a) Request for Reinstatement of an Abandoned Application. The applicant may file a written request to reinstate an application abandoned due to Office error. There is no fee for a request for reinstatement.
  • (1) Deadline. The applicant must file the request by not later than:
  • (i) Two months after the issue date of the notice of abandonment; or
  • (ii) Two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment.
  • (2) Requirements. A request to reinstate an application abandoned due to Office error must include:
  • (i) Proof that a response to an Office action, a statement of use, or a request for extension of time to file a statement of use was timely filed and a copy of the relevant document;
  • (ii) Proof of actual receipt by the Office of a response to an Office action, a statement of use, or a request for extension of time to file a statement of use and a copy of the relevant document;
  • (iii) Proof that the Office processed a fee in connection with the filing at issue and a copy of the relevant document;
  • (iv) Proof that the Office sent the Office action or notice of allowance to an address that is not the designated correspondence address; or
  • (v) Other evidence, or factual information supported by a declaration under § 2.20 or 28 U.S.C. 1746, demonstrating Office error in abandoning the application.

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  • (c) Request for Reinstatement May be Construed as Petition. If an applicant or registrant is not entitled to reinstatement, a request for reinstatement may be construed as a petition to the Director under § 2.146 or a petition to revive under § 2.66, if appropriate. If the applicant or registrant is unable to meet the timeliness requirement under paragraphs (a)(1) or (b)(1) of this section for filing the request, the applicant or registrant may submit a petition to the Director under § 2.146(a)(5) to request a waiver of the rule.

If an applicant has proof that an application was inadvertently abandoned due to a USPTO error, an applicant may file a request to reinstate the application, instead of a formal petition to revive.  37 C.F.R. §2.64(a). There is no fee for a request for reinstatement. Id. The TEAS Request for Reinstatement form can be accessed at https://www.uspto.gov/trademarks-application-process/filing-online/petition-forms.

When an application is reinstated, a computer-generated notice of reinstatement is emailed to the correspondence email address of record and the Trademark electronic records system is updated accordingly.

If the applicant is not entitled to reinstatement, a request for reinstatement may be considered as a petition to revive or a petition to the Director and must meet all the requirements of 37 C.F.R. §2.66, §2.146, or §2.147. See TMEP §§1702-1708, 1709-1709.03, 1714–1714.01(g).

The following are examples of situations where the USPTO may reinstate an application that was held abandoned for failure to timely file a statement of use or response to an Office action or that was held abandoned in total after a partial refusal or requirement (see 37 C.F.R. §2.64(a)(2) ):

  • (1) TEAS "Success" page printout shows receipt of the applicant’s submission. The applicant presents proof that a response to an Office action, statement of use, or request for extension of time to file a statement of use was timely filed through TEAS, in the form of a copy of a TEAS "Success" page confirming receipt of the application (see TMEP §303.02(a)) or a copy of an email confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission. Trademark records must show receipt of any required filing fees.
  • (2) Trademark database shows the applicant’s submission. There is an image of the timely filed response, statement of use, or request for extension of time to file a statement of use in the Trademark database.
  • (3) USPTO systems show the fee was processed. The request for reinstatement must include an affidavit or declaration under 37 C.F.R. §2.20  that attests to the contents of the original filing.
  • (4) USPTO sent an Office action or notice of allowance 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 issue date of the action or notice.  See TMEP §609.03 regarding the applicant’s duty to notify the USPTO when the correspondence address changes.
  • (5) Office action shows refusal/requirement applies to only certain goods, services, or classes (partial abandonment), but the entire application was abandoned for failure to respond to the Office action. See TMEP §718.02(a).
  • (6) Appeal shows refusal/requirement applies to only certain goods, services, or classes (partial abandonment), but the entire application was abandoned after (a) appeal is upheld or (b) the applicant withdraws or fails to prosecute the appeal – and the subject of the appeal was a refusal/requirement that applies to only certain goods, services, and/or classes. See id.

Time Limit for Filing Request. The applicant must file a request for reinstatement by not later than two months after the issue date of the notice of abandonment. 37 C.F.R. §2.64(a)(1)(i). If the applicant did not receive the notice of abandonment, the applicant must file the request by not later than two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned. 37 C.F.R. §2.64(a)(1)(ii). The request must also include a properly signed declaration under 37 C.F.R. §2.20  or 28 U.S.C. §1746  stating that the applicant did not receive the notice of abandonment. 37 C.F.R. §2.64(a)(1)(ii).

Requirement for Representation of Non-U.S.-domiciled Applicant. An applicant’s domicile will determine whether the applicant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory or the District of Columbia (a qualified U.S. attorney). 37 C.F.R. §§2.11(a), 11.1, 11.14(e); TMEP §601. An applicant whose domicile is not located within the United States or its territories must be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601. See TMEP §601.01 regarding determining domicile and §602 regarding persons authorized to practice before the USPTO in trademark matters. 

If the USPTO receives a request for reinstatement filed by an unrepresented foreign domiciliary, an attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will follow the procedures in TMEP §601.01(a) and grant the applicant 60 days to appoint a qualified U.S. attorney and to supplement the request, as appropriate. If the applicant does not appoint a qualified U.S. attorney and submit any additional necessary information within the time allowed, the request will be denied.