1714.01(f) Applicability of Unintentional Delay Standard
1714.01(f)(i) Situations Where the Unintentional Delay Standard Applies
The unintentional delay standard of Trademark Rule 2.66 applies only to the "failure" to respond to an examining attorney’s Office action or a notice of allowance. See 15 U.S.C. §§1051(d)(4), 1062(b). This includes the failure to meet minimum filing requirements for a statement of use or request for an extension of time to file a statement of use.
The minimum filing requirements for a statement of use are listed in 37 C.F.R. §2.88(c): (1) the fee for at least a single class; (2) at least one specimen of the mark as used in commerce; and (3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant stating that the mark is in use in commerce.
For a trademark or service mark, the minimum filing requirements for a request for extension of time to file a statement of use are: (1) a verified statement, signed by the applicant or a person properly authorized to sign on behalf of the applicant, that the applicant has a continued bona fide intention to use the mark in commerce; (2) an identification of the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. In re El Taurino Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996); TMEP §1108.04. See TMEP §1108.04 for the minimum filing requirements for an extension request for a collective mark or certification mark.
An applicant who fails to meet the minimum filing requirements for a statement of use or request for an extension of time to file a statement of use has, in effect, not filed the statement of use or extension request. Therefore, if the failure to meet the minimum filing requirements was unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66.
An applicant may also file a petition to revive under 37 C.F.R. §2.66 if the applicant timely files a notice of appeal from an examining attorney’s final refusal, but unintentionally fails to include the appeal fee required by 15 U.S.C. §1070.
1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does Not Apply
1714.01(f)(ii)(A) Holding of Abandonment of an Application for Incomplete Response
The unintentional delay standard of 37 C.F.R. §2.66 does not apply to an application that is abandoned for filing an incomplete response to an examining attorney’s Office action. Incomplete responses to examining attorneys’ Office actions are governed by 37 C.F.R. §2.65(a)-(a)(2), which gives the examining attorney discretion to grant an applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response pursuant to 37 C.F.R. §2.65(a)(2). If the examining attorney holds the application abandoned for failure to file a complete response to an Office action, the applicant may file a petition to the Director to review the examining attorney’s action under 37 C.F.R. §2.146. The Director will reverse the examining attorney’s action only if there is clear error or an abuse of discretion, the petitioner establishes substantial compliance, or, where the application was abandoned due to an improperly signed response, the petitioner provides a properly signed response to Office action. See TMEP §§1713.01, 1713.02.
A request for reconsideration of a final refusal (see TMEP §§715.03–715.03(c)) that does not meet all legal requirements and is not accompanied by a proper notice of appeal will be treated as an incomplete response to the final Office action. If the examining attorney denies the request for reconsideration, the time for filing a notice of appeal runs from the issuance date of the final action. TMEP §715.03(c). If the time for appeal has expired and the application is abandoned for an incomplete response, the applicant may not file a petition to revive under 37 C.F.R. §2.66. The applicant may file a petition to the Director to review the examining attorney’s action under 37 C.F.R. §2.146. See TMEP §1713 regarding petitions to reverse a holding of abandonment for an incomplete response.
1714.01(f)(ii)(B) Examining Attorney’s Refusal of Registration on Ground That Applicant Did Not Meet Statutory Requirements Before Expiration of Deadline for Filing Statement of Use
If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use, as set forth in 37 C.F.R. §2.88(c), the applicant may file a petition to revive under 37 C.F.R. §2.66. However, the applicant may not file a petition to revive under 37 C.F.R. §2.66 if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(c), but the examining attorney later refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use (15 U.S.C. §1051(d); 37 C.F.R. §2.88(b) ) on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use). The applicant may appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board. See TMEP §1109.16(a) regarding the requirements that must be met within the statutory period for filing the statement of use.
1714.01(f)(ii)(C) Goods/Services Omitted from Statement of Use or Request for Extension of Time to File a Statement of Use
If the applicant lists the goods/services/classes in a statement of use or request for an extension of time to file a statement of use, and omits any goods or services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted. The applicant may not thereafter request that the goods/services be reinserted in the application. 37 C.F.R. §§2.88(b)(1)(iv), 2.89(f); TMEP §§1108.02(d), 1109.13. In these situations, the applicant may not file a petition under 37 C.F.R. §2.66 claiming unintentional delay in filing a statement of use or extension request for the omitted goods/services.
1714.01(f)(ii)(D) Registered Marks
Trademark Rule 2.66 does not apply to registrations; it only applies to applications.
Registrants must file petition to Director, not petition to revive. If a registrant fails to timely respond to an Office action regarding a §8 affidavit, §71 affidavit, or §9 renewal application, even if the electronic record does not indicate the registration is cancelled or expired, the registrant may file a petition to the Director under 37 C.F.R. §2.146(a)(5) and §2.148 to waive a rule and accept a late response. The petition must be filed by not later than two months after the issue date of the notice of cancellation/expiration. 37 C.F.R. §2.146(d)(1). Where the registrant declares under 37 C.F.R. §2.20 or 28 U.S.C. §1746 that it did not receive the action, the petition must be filed by not later than two months 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. §2.146(d)(2)(ii).
The Director will waive a rule only in an extraordinary situation, where justice requires, and no other party is injured. The Director has no authority to waive a statutory requirement. See TMEP §1708 regarding the waiver of rules.
See TMEP §§1712.02–1712.02(b) regarding requests to reinstate cancelled or expired registrations.
1714.01(f)(ii)(E) Dismissal of Appeal for Failure to File a Brief
An applicant cannot file a petition to revive under 37 C.F.R. §2.66 if an application is abandoned because the Board dismisses an appeal for failure to file a brief. In this situation, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief. See TBMP §1203.02(a). If the Board denies this motion, the applicant may file a petition to the Director under 37 C.F.R. §2.146, asking the Director to reverse the Board’s order. The petition must be filed by not later than thirty days after the issue date of the Board’s order. 37 C.F.R. §2.146(e)(2). The Director will reverse the Board’s action only if the Board clearly erred or abused its discretion.