204 Defective or Informal Applications
If an application filed under Trademark Act §1 or §44 does not meet the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) (see TMEP §202), the application is void. These applications are also referred to as "incomplete" or "informal."
204.01 Filing Date Cancelled if Minimum Filing Requirements Not Met
Applications filed under Trademark Act §1 or §44 are initially assigned a filing date and serial number and then reviewed for compliance with the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a). If the minimum filing requirements have not been met, the USPTO cancels the filing date and serial number, refunds any filing fee submitted, and sends a notice to the applicant explaining why the application is defective.
See TMEP §204.02 regarding the procedures for requesting review of the denial of a filing date by the Office of the Deputy Commissioner for Trademark Examination Policy.
204.02 Resubmission of Applications and Request to Restore Filing Date
If the applicant believes that the USPTO committed an error in denying the application a filing date, the applicant may submit a request to restore the filing date. See TMEP §1711. Prior to making the request, the applicant must file a new TEAS application. After the applicant receives a new serial number, the applicant must submit a TEAS Request to Restore Filing Date form that can be accessed by clicking on the link entitled "Petition Forms."
The request should: (1) include the new serial number; (2) state the reason(s) why the applicant believes the filing date was denied in error; and (3) include a copy of any Notice of Incomplete Trademark Application received from the USPTO. Although applicants have two (2) months from the issuance date of a Notice of Incomplete Trademark Application to file a request to restore the original filing date (37 C.F.R. §2.146(d) ), it is recommended that the applicant file the request immediately upon receipt of the new serial number, to expedite processing.
Permitted Paper Applications. If the USPTO denies a filing date in a permitted paper application (see TMEP §301.01), the applicant may resubmit the original papers or a copy of the original papers, together with the item(s) necessary to correct the defect(s), and a new filing fee. The applicant should cross off the cancelled serial number. A filing fee for at least a single class of goods or services must be included when the applicant resubmits an application, even if the applicant has not yet received a refund of the fee previously submitted.
The filing date will be the date on which a complete application, including all elements required by 37 C.F.R §2.21(a), was received in the USPTO. Applications claiming priority under §44(d) of the Trademark Act must meet all filing date requirements within six months of the filing date of the foreign application to retain the priority claim. 37 C.F.R §2.34(a)(4)(i); TMEP §§806.01(c), 1003.02.
204.03 Examining Attorney’s Handling of Applications that Are Erroneously Accorded a Filing Date
In rare situations, an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R §2.21(a) for receipt of a filing date may be inadvertently referred to an examining attorney for examination.
Examining Attorney Discovers Error Before Taking Action. If the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal. See TMEP §204. The USPTO will cancel the filing date and serial number, refund any filing fee submitted, and send a notice to the applicant explaining why the application is defective. See TMEP §204.01.
Examining Attorney Discovers Error After Taking Action. However, if the examining attorney discovers that the application as filed did not meet the minimum requirements for receipt of a filing date after issuing an action, the examining attorney must issue a supplemental Office action refusing registration on the ground that the application was not eligible to receive a filing date. Any outstanding refusals and requirements must be maintained and incorporated into the supplemental Office action. The applicant will be given three months to respond to the Office action, with an option for applicant to extend the deadline by requesting one three-month extension of the time to respond. See TMEP §§711-711.03 regarding the deadline for response to an Office action. If the applicant fails to perfect the filing-date requirements within the response period, the application is void. If a filing fee was submitted with the original application, the examining attorney must have the filing fee refunded and update the USPTO’s automated records to indicate that the application is abandoned.
If the applicant complies with the filing-date requirements within the response period, the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing-date requirements. In such a case, the examining attorney must conduct a new search of the USPTO records for conflicting marks, and issue another Office action if necessary.
If the supplemental Office action was issued because the EFT or credit-card payment was refused or charged back by a financial institution, the examining attorney must treat a response that addresses any outstanding refusals and requirements, but does not include the required fee, as an incomplete response, and must issue a notice of incomplete response granting the applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response. To issue a notice of incomplete response, the examining attorney must use the "Notice of Non-Responsive Amendment." If the applicant does not respond, or responds but does not submit the required fee, the application must be abandoned for incomplete response.
Permitted Paper Applications. If the supplemental Office action was issued because the check or money order submitted as payment of an application filing fee was returned to the USPTO unpaid, the examining attorney must treat a response that addresses any outstanding refusals and requirements, but does not include the required fee, as an incomplete response, and must issue a notice of incomplete response granting the applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response. See TMEP §301.01 regarding the limited exceptions for paper submissions. To issue a notice of incomplete response, the examining attorney must use the "Notice of Non-Responsive Amendment." If the applicant does not respond, or responds but does not submit the required fee, the application must be abandoned for incomplete response.