1712.02 Reinstatement of Registrations Cancelled or Expired

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

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(b) Request for Reinstatement of Cancelled or Expired Registration. The registrant may file a written request to reinstate a registration cancelled or expired due to Office error. There is no fee for the request for reinstatement.
- (1) Deadline. The registrant must file the request by not later than:
  - (i) Two months after the issue date of the notice of cancellation/expiration; or
  - (ii) Where the registrant has timely filed an affidavit of use or excusable non-use under section 8 or 71 of the Act, or a renewal application under section 9 of the Act, 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, where the registrant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of cancellation/expiration or where the Office did not issue a notice.
- (2) Requirements. A request to reinstate a registration cancelled/expired due to Office error must include:
  - (i) Proof that an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action was timely filed and a copy of the relevant document;
  - (ii) Proof of actual receipt by the Office of an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action 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 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 cancelling/expiring the registration.
(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.

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. 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 denied, 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 additional time 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.

If a registrant is not entitled to reinstatement due to Office error, a request for reinstatement may be construed as a petition to the Director under 37 C.F.R §2.146, if appropriate. 37 C.F.R §2.64(c); see TMEP §1712.02(b).

1712.02(b) Petition to Reinstate a Cancelled Registration and Accept a Late Response to a Post Registration Office Action

If a registrant failed to timely respond to an Office action refusing to accept a §8 or §71 affidavit or §9 renewal application due to an extraordinary situation, the registrant may file a petition under 37 C.F.R. §2.146(a)(5) and §2.148 requesting the Office to reinstate the registration, if it is cancelled, and accept a late response to the Office action.

See TMEP §§1705-1705.09 regarding the procedure for petitions to the Director.

1712.02(b)(i) Time for Filing Petition

The petition must be filed no later than two months after the date of actual knowledge of the cancellation of the registration, and may not be filed later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired. 37 C.F.R §2.146(d)(2)(ii). In addition, the petition must include a response to the Office action.

1712.02(b)(ii) Standard of Review

Under 37 C.F.R. §2.146(a)(5) and §2.148, the Director may waive any provision of the rules that is not a provision of the statute, only when an extraordinary situation exists, justice requires, and no other party is injured. See TMEP §1708 for further discussion of conditions for waiver of rules. The unintentional delay standard of 37 C.F.R. §2.66 does not apply to registrations; it applies only to pending applications. TMEP §1714.01(f)(ii)(D).

If the registrant did not receive notification of an Office action refusing to accept an affidavit or renewal application, the petition should include a clear statement that the Office action was not received, a statement of facts outlining why the situation is extraordinary, and a complete response to the Office action. 37 C.F.R §§2.146(a)(5) and (c)(1).

1712.02(b)(iii) No Authority to Waive Statutory Requirements

As noted in TMEP §1708, the Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059 or affidavit of use of a registered mark under 15 U.S.C. §1058. Therefore, if the registrant did not timely file a §8 or §71 affidavit or a §9 renewal application, a petition to extend or waive the statutory deadline will be denied, regardless of the reason for the delay.

If a registrant contends that a proper affidavit or renewal application was timely filed, but the registrant does not have proof that the affidavit or renewal application was received in the USPTO on or before the due date, the Director will not grant a petition to accept the affidavit or renewal application.

Similarly, if a registrant files a premature affidavit or renewal application, and does not file a newly executed affidavit or renewal application within the statutory filing period (which includes the grace period), the Director will not grant a petition to accept the premature affidavit or renewal application. See TMEP §§1604.04(a), 1606.03(a), 1613.04.