1108.05    Petitions from Denial of Request for an Extension of Time to File a Statement of Use

If an extension request is denied, and there is no time remaining in the statutory filing period, the application is abandoned.  Applicant’s recourse is as follows:

  • Petition to Revive Under 37 C.F.R. §2.66 .  If the applicant unintentionally failed to comply with the minimum filing requirements (see TMEP §1108.04 for a list of these requirements), the applicant may file a petition to revive under 37 C.F.R. §2.66, by not later than two months after the issue date of the denial of the extension request or the notice of abandonment or two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under §2.20  or 28 U.S.C. 1746  that it did not receive the notice of abandonment. The petition must include the fee required by 37 C.F.R. §2.6.  See TMEP §§1714–1714.01(g) regarding petitions to revive.
  • Request for Reinstatement Under 37 C.F.R §2.64 .  If the applicant has proof that shows on its face that the extension request met the minimum requirements when filed, the applicant may request reinstatement under 37 C.F.R §2.64  by not later than two months after the issue date of the denial of the extension request or the notice of abandonment or two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under §2.20  or 28 U.S.C. 1746  that it did not receive the notice of abandonment.  For example, if the extension request is denied due to the omission of a fee, and the applicant has proof that shows on its face that the fee was included, the applicant may request reinstatement.  No fee is required for the reinstatement request.  See TMEP §1712 regarding requests for reinstatement.
  • Petition Under 37 C.F.R. §2.146 .  The applicant may file a petition under 37 C.F.R. §2.146  if the applicant believes that the ITU staff’s denial of an extension request was improper (e.g., if applicant contends that the extension request actually met the requirements of 15 U.S.C. §1051(d)(2)   and 37 C.F.R. §2.89, but was improperly denied).  37 C.F.R. §§2.89(g), 2.146(a)(3).  For example, the applicant might file a petition claiming that the denial was improper if the ITU staff denied an extension request because the applicant’s showing of good cause was insufficient, but applicant believes that the showing was sufficient.  The applicant must file the petition by not later than two months after the issue date of the denial of the extension request or two months of actual knowledge of the abandonment of the application and not later than six months after the date the trademark electronic records system indicates that the application is abandoned where the applicant declares under §2.20  or 28 U.S.C. 1746  that it did not receive the notice of abandonment. The petition must include the fee required by 37 C.F.R. §2.6. 37 C.F.R. §§2.146(c), (d).  See TMEP Chapter 1700 regarding petitions.

Filing a petition or request for reinstatement does not stay the time for filing a statement of use or further extension request.   See 37 C.F.R. §2.89(g).  However, if the applicant fails to file a statement of use or further request(s) for extension(s) of time to file a statement of use during the pendency of a petition, the applicant will be given an opportunity to perfect the petition by paying the fee(s) for each missed extension request and filing the last extension request, or statement of use, that should have been filed.   In re Moisture Jamzz, Inc., 47 USPQ2d 1762, 1763-64 (Comm’r Pats. 1997).

If a petition is granted, the term of the requested six-month extension will run from the date of the expiration of the previously existing six-month period for filing a statement of use.  37 C.F.R. §2.89(g).

No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance.   See15 U.S.C. §1051(d)(2);  37 C.F.R. §2.89(e)(1).