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

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

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)(3) ).  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 not grant 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 issue date of the notice of allowance.  15 U.S.C. §§1051(d)(1), (2); 37 C.F.R. §2.66(d).  In these cases, the petition will be dismissed, and the petition fee will be refunded.

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 or the goods/services/classes to which the intent-to-use basis applies and proceed to registration on the alternative basis or bases for registration for those goods/services/classes supported by such alternative bases.

See TMEP §1705.04 and §1714.01(d) regarding petition timeliness and §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).

See TMEP §§1108–1108.05 regarding extension requests, and §§1109–1109.18 regarding statements of use.