1613.18 Petition Under 37 C.F.R. §2.146
The action of the Post Registration staff on a §71 affidavit or declaration may not be appealed to the Trademark Trial and Appeal Board, but the holder may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 7.40(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c). See TMEP §§1705–1705.09 regarding petition procedure.
1613.18(a) Response to Examiner’s Refusal Required Before Petition
A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. 37 C.F.R. §7.40(a).
If the Post Registration staff continues the refusal to accept the affidavit or declaration, the holder may file a petition for review of the action under 37 C.F.R. §2.146(a)(2) within six months of the issuance date. See TMEP §1705.04. If the holder does not file a petition within six months, the registration will be cancelled. 37 C.F.R. §7.40(b).
1613.18(b) Decision on Petition Is Final Action of the USPTO
The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration ( see TMEP §1613.18(c) ), or an appeal to an appropriate court ( see TMEP §1613.18(d)) within two months of the issuance date of the decision on petition, the registration will be cancelled.
1613.18(c) Request for Reconsideration of Denial of Petition
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid with the request for reconsideration. See TMEP §1705.08 regarding requests for reconsideration of petition decisions.
1613.18(d) Appeal to Federal Court
The holder of the registration may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition. 15 U.S.C. §1071(a)(1) and (b)(1); 37 C.F.R. §2.145(a) and (c).
The deadline for filing an appeal or commencing a civil action is two months from the issuance date of the decision on petition. 15 U.S.C. §1071(a)(2) and (b)(1); 37 C.F.R. §2.145(d)(1). Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.
Under 37 C.F.R. §7.40(c), a decision on petition is necessary before the holder can file an appeal or commence a civil action in any court.