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 issue 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 -- by not later than two months after the issue date of the decision or two months of actual knowledge of the decision and not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is cancelled/expired (see 37 C.F.R. §2.146(d) );
  • Denial of a request for an extension of time to file a statement of use -- by not later than two months after the issue date of the denial or two months of actual knowledge of the denial and not later than six months after the date the trademark electronic records system indicates that the application is abandoned (see 37 C.F.R §2.146 );
  • 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 -- by not later than two months after the issue date of the cancellation notice or two months of actual knowledge of the cancellation and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired (see 37 C.F.R. §2.146(d); see TMEP §1712.02(b));
  • Petition to revive -- by not later than two months after the issue date of 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 37 C.F.R. §2.20 or 28 U.S.C. §1746 that it did not receive the notice of abandonment (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 -- by not later than two months after the issue date of the examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained or two months after 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 and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in part by examiner’s amendment, where the applicant declares under 37 C.F.R §2.20  or 28 U.S.C. §1746  that it did not receive the examiner’s amendment (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 issue date of 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 37 C.F.R §2.20  or 28 U.S.C. §1746  that it did not receive the notice of abandonment (see 37 C.F.R §2.146(d)(2)(i) );
  • Request for reconsideration of decision on petition -- by not later than two months after the issue date of the decision denying the petition or two months after the date of actual knowledge of the decision denying the petition and not later than six months after the issue date of the decision, where the applicant declares under 37 C.F.R §2.20  or 28 U.S.C. §1746  that it did not receive the decision (37 C.F.R. §§2.66(f)(1), 2.146(i)(1) );
  • Petition to the Director to reinstate application after failure to respond -- if the applicant declares under 37 C.F.R §2.20  or 28 U.S.C. §1746  that it did not receive the action, or no action was issued, the petition must be filed by not later than two months of actual knowledge of the abandonment of an application and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in full or in part (37 C.F.R §2.146(d)(2)(i) );
  • Petition to the Director to reinstate registration after failure to respond -- where the registrant has timely filed an affidavit of use or excusable non-use under Section 8 or 71 of the Act, or a renewal application under Section 9 of the Act, if the registrant declares under 37 C.F.R §2.20  or 28 U.S.C. §1746  that it did not receive the action, or no action was issued, the petition must be filed by not later than two months after the date of actual knowledge of the cancellation/expiration of a registration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired (37 C.F.R §2.146(d)(2)(ii) );
  • Petition to Director to review denial of certification of international application -- two months after the date of actual knowledge of the denial of certification of an international application under §7.13(b) and not later than six months after the trademark electronic records system indicates that certification is denied where the applicant or registrant declares under 37 C.F.R §2.20  or 28 U.S.C. §1746  that it did not receive the action, or no action was issued (37 C.F.R §2.146(d)(2)(iii) ).

If the rules do not provide an express deadline, the petition must be filed by not later than two months after the issue date of the action from which relief is requested. 37 C.F.R §2.146(d)(1).

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.