1712.02(a)    Request for Reinstatement Due to USPTO Error

A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that a USPTO error caused the registration to be cancelled or expired. 37 C.F.R. §2.64(b). The request must be filed using the TEAS Petition to Director form. There is no fee for a request for reinstatement. Id. Although a petition fee is required 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 (see 37 C.F.R. §2.64(b)(2) ):

  • (1) TEAS "Success" page printout shows receipt of the registrant’s submission. 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 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 registrant’s submission. There is an image of a timely filed affidavit, renewal application, or response to Office action in the Trademark database.
  • (3) USPTO systems show the fee was processed.  The registrant must submit an affidavit or declaration under 37 C.F.R. §2.20  attesting to the contents of the original filing.
  • (4) 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 issue date of the action. See TMEP §609.03 regarding the registrant’s duty to notify the USPTO when the correspondence address changes.

Time Limit for Filing Request. The registrant must file a request for reinstatement by not later than two months after the issue date of the notice of cancellation/expiration. 37 C.F.R. §2.64(b)(1)(i). If the registrant did not receive a notice of cancellation/expiration or the Office did not issue a notice, the registrant must file the request by not later than two months after the date of actual knowledge of the cancellation/expiration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired. 37 C.F.R. §2.64(b)(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 registrant did not receive the notice of cancellation/expiration if one was issued. Id.  

Statutory requirements cannot be waived upon request. The Director has no authority to waive a statutory requirement, such as the deadline for filing a renewal application under 15 U.S.C. §1059   and/or an affidavit of use of a registered mark under 15 U.S.C. §1058  or §1141k.  See TMEP §1708 and §1712.02(b)(iii) and cases cited therein for more about the Director’s authority. Therefore, if the registrant did not timely file a §8 or §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 request.

Requirement for Representation of Non-U.S.-domiciled Registrant. A registrant’s domicile will determine whether the registrant 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. A registrant 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 registrant 60 days to appoint a qualified U.S. attorney and to supplement the request, as appropriate. If the registrant does not appoint a qualified U.S. attorney and submit any additional necessary information within the time allowed, the request will be denied.