1705.04    Timeliness

To avoid prejudicing the rights of third parties, petitions must be filed within a reasonable time after the disputed event.  In many cases, deadlines for filing petitions are expressly stated in the rules.  The following petition deadlines run from the issuance date of the action or order of which the petitioner seeks review:

  • Denial of a request for an extension of time to file a notice of opposition -- 15 days (37 C.F.R. §2.146(e)(1) );
  • Interlocutory order of the Trademark Trial and Appeal Board -- 30 days (37 C.F.R. §2.146(e)(2) );
  • Final decision of the Trademark Trial and Appeal Board -- two months ( see 37 C.F.R. §2.146(d) );
  • Denial of a request for an extension of time to file a statement of use -- two months (37 C.F.R. §2.89(g) );
  • Section 7 rejection -- six months from date of issuance of Office action refusing to enter an amendment or correction (37 C.F.R. §2.176);
  • Section 8 or 71 rejection -- six months from date of issuance of Office action maintaining a refusal of the affidavit (37 C.F.R. §2.165(b); see TMEP §§1604.18–1604.18(a), 1613.18–1613.18(a));
  • Section 9 rejection -- six months from date of issuance of Office action maintaining a refusal of the renewal (37 C.F.R. §2.186(b); see TMEP §§1606.14–1606.14(a));
  • Petition to reinstate a registration for failure to perfect a timely filed maintenance filing under §§8, 9, or 71 – two months from date of issuance of the cancellation notice; if the registrant did not receive the cancellation notice, or no cancellation notice was issued, two months from the date the Trademark database was updated to indicate that the registration expired or was cancelled ( see 37 C.F.R. §2.146(d); see TMEP §1712.02(b));
  • Petition to revive -- two months from date of issuance of notice of abandonment or two months from the date of actual knowledge of the abandonment, if the applicant did not receive the notice of abandonment, and the applicant was diligent in checking the status of the application every six months in accordance with §2.146(i) (37 C.F.R. §2.66(a); see TMEP §§1705.05, 1714–1714.01(g) );
  • Petition to revive goods/services/classes deleted for failure to respond to a partial refusal or requirement - two months from date of issuance of the examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained or two months from the date of actual knowledge of the issuance of the examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained, if the applicant did not receive the examiner’s amendment and the applicant was diligent in checking the status of the application every six months in accordance with §2.146(i) (37 C.F.R. §2.66(a); see TMEP §§718.02(a), 1705.05, 1714–1714.01(g) );
  • Examining attorney’s formal requirement -- six months from date of issuance (15 U.S.C. §1062(b);  37 C.F.R. §§2.62, 2.63(a), (b) );
  • Petition to reverse an examining attorney’s holding of abandonment for failure to file a complete response to an Office action - two months from date of issuance of notice of abandonment ( see 37 C.F.R. §2.146(d) );
  • Request for reconsideration of decision on petition -- two months from date of issuance of decision (37 C.F.R. §§2.66(f)(1), 2.146(j)(1)).

If the rules do not provide an express deadline, the petition must be filed within two months of the date of issuance of the action from which relief is requested, under 37 C.F.R. §2.146(d).

If there is no "issuance of an action," the two-month "catchall deadline" of 37 C.F.R. §2.146(d)  runs from the date of actual knowledge, or the date of the phone call or other communication that prompts the filing of the petition (unless the subject of the petition is to reinstate a cancelled/expired registration, in which case the two months runs from the date the Trademark database was updated to indicate that the registration expired or was cancelled).  See TMEP §1705.05 regarding diligence. The two-month deadline of 37 C.F.R. §2.146(d)  also applies where the petition alleges that the petitioner did not receive the action that prompts the filing of the petition, running from the date of the petitioner’s actual knowledge of said action.

The time limits set forth in the rules are strictly enforced.  Petitions filed after the expiration of the deadlines are dismissed as untimely.  If the petitioner can show that extraordinary circumstances caused the delay in filing the petition, the petitioner may request waiver of these time limits, pursuant to 37 C.F.R. §§2.146(a)(5)  and 2.148.  See TMEP §1708 regarding waiver of rules.

Petitions filed using the certificate of mailing and certificate of transmission procedures of 37 C.F.R. §2.197  will be considered timely if mailed or transmitted to the USPTO by the due date, with a certificate that meets the requirements of 37 C.F.R. §2.197(a)(1)  ( see TMEP §§305.02, 306.05–306.05(d)).

See TMEP §1705.05 regarding the duty to exercise due diligence in monitoring the status of pending matters.