1709.02    Certain Paper Submissions with Statutory Deadlines

A petition to the Director to accept a paper submission may be filed for specific submissions with statutory deadlines if: (1) the submission was timely submitted on paper and not processed by the USPTO because it was not submitted electronically; and (2) the applicant, registrant, or petitioner is unable to timely resubmit the document electronically by the statutory deadline. 37 C.F.R. §2.147(b).

This petition option applies to the following documents with a statutory deadline under the Trademark Act:

  • An initial application seeking a priority filing date with a deadline under Section 44(d)(1) (15 U.S.C. §1126(d)(1) );
  • A statement of use submitted within the last six months of the period specified in Section 1(d)(2) (15 U.S.C. §1051(d)(2) );
  • An affidavit or declaration of continued use or excusable nonuse with a grace period deadline under Section 8(a)(3) (15 U.S.C. §1058(a)(3) ) or Section 71(a)(3) (15 U.S.C. §1141k(a)(3) );
  • A request for renewal of a registration with a deadline under Section 9(a) (15 U.S.C. §1059(a) );
  • An application for transformation of an extension of protection into a U.S. application with a deadline under Section 70(c) (15 U.S.C. §1141j(c) ); or
  • A petition to cancel a registration under Section 14 (15 U.S.C. §1064 ) on the fifth year anniversary of the date of the registration of the mark.

37 C.F.R. §2.147(b)(1)-(b)(1)(vi).

For these documents, following notification from the USPTO that a paper submission was not processed for failure to electronically file, when there is no time remaining in the statutory period, the filer may submit a petition to the Director electronically after the deadline requesting acceptance of the previously filed paper submission. If the petition is granted, the paper submission will be considered timely filed.

Filers should keep copies of any papers submitted to the USPTO, including confirmation of payment submissions, to submit as proof with the petition. If a check or money order was included with the original submission, it would have been returned with the USPTO notice indicating that the submission would not be processed and would be destroyed in accordance with the relevant record-retention schedule.

Petition requirements. The petition must be filed within two months of the issue date of the notice that the paper submission was not processed by the USPTO. 37 C.F.R. §2.147(b)(2). The petition must include a statement of the facts relevant to the petition supported by a declaration under 37 C.F.R. §2.20  or 28 U.S.C. §1746, a copy of the relevant paper submission with proof that it was timely filed, proof that the required fee was submitted with the original paper submission, and the relevant paper fees for both the submission and the petition. 37 C.F.R. §2.147(b)(2)(i)-(v).