1703    Specific Types of Petitions  

A variety of issues may be reviewed on petition.  The following is a list of issues that commonly arise:

Petitions to Restore an Application Filing Date.   See TMEP §1711.

Petitions to Accept Paper Submissions in trademark matters are reviewed under 37 C.F.R. §§2.146(a)(5), 2.147, 2.148. See TMEP §1709. Petitions to accept paper submissions in Trademark Trial and Appeal Board proceedings due to an ESTTA outage are reviewed under 37 C.F.R §§2.146(a)(5), 2.147(b)(1)(vi), 2.147(d), 2.148.

Petitions to Make Special.  See TMEP §1710.

Petitions to Reverse an Examining Attorney’s Holding of Abandonment for Failure to File a Complete Response to an Office Action are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1713.

Petitions to Revive an Application Abandoned Due to Unintentional Delay in Responding to an Office Action or Notice of Allowance are reviewed under 37 C.F.R. §2.66. See TMEP §§1714–1714.01(g).

Petitions to Restore Jurisdiction to the Examining Attorney may be filed by the applicant under 37 C.F.R. §2.84, when the examining attorney does not have jurisdiction to review an amendment to the application. See TMEP §§1504–1504.05.

Petitions to Review the Action of an Examining Attorney.  A petition to review an examining attorney’s formal requirement may be filed under 37 C.F.R. §2.63(a)  and (b)  and §2.146(a)(1), if the requirement is repeated or made final and the subject matter is procedural in nature and therefore appropriate for petition.  See TMEP §1704 regarding petitionable subject matter and TMEP §1706 regarding the standard of review.

Petitions to Review the Requirement for a Qualified U.S. Attorney and/or for Information or Declarations Related to Such Requirement under 37 C.F.R. §2.11(f). If the USPTO issues an Office action that (1) maintains only a requirement for U.S. counsel and/or additional information under Rule 2.11 (a), (b), and/or (c), or (2) maintains only the requirement for the TEAS Plus processing fee under 37 C.F.R. §2.22(c)  in addition to one or all of those requirements, an applicant’s or registrant’s recourse for seeking review is limited to a petition to the Director under Rule 2.146. 37 C.F.R. §§2.11(f), 2.146, 2.165, 2.186, 7.40.

Petitions to Reinstate a Cancelled Registration and Accept a Late Response to an Office Action Issued in Connection with a Section 8 or 71 declaration of use or excusable nonuse are reviewed under 37 C.F.R §2.146(a)(5)  and §2.148. See TMEP §§1604.16, 1606.12, 1613.16, 1708, 1712.02(b).

Petitions to Reinstate a Cancelled Registration and Accept a Late Response to an Office action Issued in Connection with an Expungement or Reexamination Proceeding Under Section 16a or 16b are reviewed under 37 C.F.R §2.146(a)(5)  and §2.148. See TMEP §1716.04(f).

Petitions to Review the Action of the Post Registration Staff may be filed if an affidavit of use or excusable nonuse is refused under 15 U.S.C. §1058  or §1141k, a renewal application is refused under 15 U.S.C. §1059, or a proposed amendment or correction is refused under 15 U.S.C. §1057. See 37 C.F.R. §§2.165, 2.176, 2.186; TMEP §§1604.18, 1606.14, 1613.18.

Petitions to Review the Refusal of the Madrid Processing Unit to Certify an Application for International Registration are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1902.03(a).

Petitions to the Director Regarding an International Application or Registration are reviewed under 37 C.F.R §2.146(a)(3).

Petitions to Redact Information from USPTO Records are reviewed under 37 C.F.R §2.146(a)(3).

Petitions to Reverse a Nonfinal Interlocutory Order of the Trademark Trial and Appeal Board (37 C.F.R. §2.146(e)(2) ) are reviewed under the standard of clear error or abuse of discretion, if the subject matter is procedural in nature and therefore appropriate for consideration on petition. Riko Enters., Inc. v. Lindsley, 198 USPQ 480 (Comm’r Pats. 1977); see Trademark Trial and Appeal Board Manual of Procedure (TBMP) §§901.02(a), 905.

Petitions to Review a Decision to Deny or Grant a Request for an Extension of Time to Oppose (37 C.F.R. §2.146(e)(1) ) are reviewed to determine whether the Board correctly applied 37 C.F.R. §2.101  and §2.102.

Petitions to Add or Substitute a Basis After Publication are reviewed under 37 C.F.R. §2.146(a)(2).  See 37 C.F.R. §2.35(b)(2); TMEP §§806.03(j)-806.03(j)(iii).

Petitions to Abandon an Affidavit or Declaration of Incontestability Under §15 of the Trademark Act, 15 U.S.C.  §1065, are reviewed under 37 C.F.R. §2.146(a)(3). See 37 C.F.R. §2.167(j); TMEP §§1605, 1605.03, 1704, 1707.

See TMEP §1607 and TBMP §§303, 307, 308, and 309 regarding petitions to cancel registrations under 15 U.S.C. §1064, which are handled by the Board.