204    Defective or Informal Applications

If an application under §1 or §44 of the Trademark Act 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 under §1 or §44 of the Trademark Act 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  

The USPTO prefers that all applications be filed through TEAS.  However, if the USPTO denies a filing date in a paper application, 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 new filing date will be the date on which a complete application, including all elements required by 37 C.F.R. §2.21(a),is received in the USPTO.  Note that 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.  37 C.F.R. §2.34(a)(4)(i); TMEP §§806.01(c) and 1003.02.

If an 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.  The USPTO prefers that the applicant file a new application, including the required application filing fee, using TEAS, located at http://www.uspto.gov.  After the applicant receives a new serial number, the applicant should submit a request to restore the original filing date.  To ensure proper routing and processing, the Office prefers that the request also be filed electronically.  In TEAS, the Request to Restore Filing Date form can be accessed by clicking on the link entitled "Petition Forms."  Alternatively, the request should be faxed to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950.

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.

204.03    Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date

Sometimes an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R. §2.21  for receipt of a filing date is erroneously referred to an examining attorney for examination.  In this situation, if the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal.  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.

If, however, an examining attorney discovers after issuing an action that the application as filed did not meet the minimum requirements for receipt of a filing date, then 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 should be given six months to comply with all filing date requirements.  If the applicant fails to qualify for a filing date 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 six months of the issuance of the examining attorney’s Office action, 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 Office records for conflicting marks, and issue another Office action if necessary.