1705    Petition Procedure

A petition should include a verified statement of the relevant facts, the points to be reviewed, the requested action or relief, and the fee required by 37 C.F.R. §2.6.  37 C.F.R. §2.146(c).  The petition should be accompanied by a supporting brief and any evidence to be considered.

1705.01    Standing

A person must have standing to file a petition.   See Ex parte Lasek, 115 USPQ 145 (Comm’r Pats. 1957).

There is no provision in the Trademark Act or Rules of Practice for intercession by a third party in an ex parte matter.  Accordingly, petitions by third parties to review actions taken in ex parte matters are dismissed.

1705.02    Petition Fee

A petition must be accompanied by the fee required by 37 C.F.R. §2.6.

Any petition that is not accompanied by the required fee is incomplete.  A staff attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner in writing that the petition is incomplete and grant the petitioner 30 days to submit the fee.  If the fee is not submitted within the time allowed, the petition is denied without consideration on the merits, because the petitioner has not met the requirements for filing a petition.   See37 C.F.R. §2.146(c).

A petition fee will be waived only in an extraordinary situation ( see TMEP §1708), or if the record clearly shows that the petition was the result of a USPTO error.  When requesting waiver of a fee, it is recommended that the petitioner submit the fee, but include a request that the fee be refunded because the petition was the result of a USPTO error.  This will expedite consideration of the petition if the request for waiver of the petition fee is denied.

If a check submitted as a petition fee is returned to the USPTO unpaid, or an electronic funds transfer or credit card is refused or charged back by a financial institution, the petitioner must resubmit the petition fee, along with a fee for processing the payment that was refused or charged back, before the petition will be considered on the merits.  37 C.F.R. §2.6(b)(12).   See TMEP §405.06.

1705.03    Evidence and Proof of Facts

A petition should include a statement of the relevant facts, and should be accompanied by any evidence to be considered.  Under 37 C.F.R. §2.146(c), when facts are to be proved, the petitioner must submit proof in the form of an affidavit or declaration under 37 C.F.R. §2.20.

An affidavit or declaration supporting a petition should be based on firsthand knowledge.  For example, if the petition arises from the loss or misplacement of a document submitted to the USPTO, it should be accompanied by the affidavit or declaration of the person who sent the document, attesting to the date of submission and identifying the document filed with the petition as a true copy of the document previously filed.

When a petition includes an unverified assertion that is not supported by evidence, a staff attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner that an affidavit or declaration is required, and grant the petitioner 30 days to submit the necessary verification.  If the petitioner does not submit a verification within the time allowed, the petition will be denied, or, in appropriate cases, a decision on petition will be rendered based on the information in the record, without consideration of the unverified assertion.

This procedure is also followed with respect to physical evidence.  If physical evidence is available, such as a postcard receipt that shows the date of actual receipt of a document in the USPTO ( see TMEP §303.02(c)), or a copy of a cancelled check that shows receipt of the filing fee for a missing document, the petitioner should include the evidence with the initial petition.  However, if the evidence is omitted from the initial filing, the USPTO will give the petitioner an opportunity to supplement the petition within a specified time limit, normally 30 days.

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.

1705.05    Due Diligence

Applicants and registrants are responsible for tracking the status of matters pending before the USPTO.  It is reasonable to expect some notice from or action by the USPTO within six months of submitting a document in an application or registration. A party who has not received a notice or action from the USPTO within that time frame should promptly check the matter’s status and request corrective action if necessary.

Applicants and registrants can check the status of an application or registration through the Trademark Status and Document Retrieval ("TSDR") database on the USPTO website at http://tsdr.uspto.gov/, which is generally available 24 hours a day, seven days a week. The party should print the TSDR screen and place it in the party’s own file, in order to have a record of the status inquiry and the information learned. 

A party who does not have access to the Internet can call the Trademark Assistance Center ("TAC") at (571) 272-9250 or (800) 786-9199 to determine the status or to obtain clarification about the status. After making a telephone status inquiry, a party should make a note in the party’s own file as to the date of the status inquiry and the information learned. No further documentation is required to establish that the status inquiry was made.

If a status inquiry reveals that a document submitted to the USPTO is not in the electronic record or was not received in the Office, that an Office action or notice was issued but not received by the applicant or registrant, that an application has been abandoned or a registration cancelled or expired, or that some other problem exists, corrective action should be promptly requested.

When further action by the USPTO is necessary, applicants and registrants should make a written request to TAC at TrademarkAssistanceCenter@uspto.gov and state the nature of the action to be taken. If an application has been abandoned, a petition to revive under 37 C.F.R §2.66  (if not due to Office error) or request for reinstatement under 37 C.F.R §2.64(a)  (if due to Office error) should be filed through the Trademark Electronic Application System ("TEAS"). See TMEP §§1702–1708, 1713, 1714. If a registration has been cancelled or expired, a request for reinstatement under 37 C.F.R §2.64(b)  (if due to Office error) or formal petition under 37 C.F.R. §2.146  (if not due to Office error) should be filed through TEAS. See TMEP §§1712–1712.02.

In all cases, petitions and requests for reinstatement will be denied if filed more than six months after the electronic record is updated to reflect that an application is abandoned or that a registration is cancelled or expired. 37 C.F.R. §§2.64(a)(1)(ii), (b)(1)(ii), 2.66(a)(2), 2.146(d)(2). This requirement removes any uncertainty in the Office’s assessment of whether an applicant or registrant was duly diligent in monitoring the status of an application or post-registration maintenance filing.

These deadlines also protect third parties who rely on the Trademark electronic record to determine whether a chosen mark is available for use or registration. For example, a third party may search USPTO records and understand that an earlier-filed potentially conflicting mark will not be revived or reinstated more than six months after the date the electronic record indicates that it was abandoned.

1705.06    Stay or Suspension of Pending Matters

37 C.F.R. §2.146(g)  (Extract)

The mere filing of a petition ... will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board nor stay the period for replying to an Office action in an application except when a stay is specifically requested and is granted or when §§2.63(a) and (b) and 2.65(a) are applicable to an ex parte application.

Filing a petition does not stay the period for replying to an Office action, except when a stay is specifically requested and granted under 37 C.F.R. §2.146(g), or when 37 C.F.R. §§2.63(a)  and (b)  and 2.65(a) are applicable.  Any request to stay a deadline for filing a response to an Office action or notice of appeal should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.  If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Deputy Commissioner for Trademark Examination Policy.  If a stay has not been specifically requested and granted under 37 C.F.R. §2.146, the examining attorney must not suspend action on an application pending a decision on petition.

A request to suspend a proceeding before the Board pending a decision on petition should be directed to the Board.  37 C.F.R. §2.117(c); TBMP §510.03(a).   See TBMP §§510–510.03(b), 1213 regarding suspension of Board proceedings.

Filing a petition to revive an application abandoned for failure to file a proper statement of use or request for an extension of time to file a statement of use does not stay the time for filing a statement of use or further extension request(s).   See TMEP §1714.01(b)(i).

1705.07    Signature of Petition

A petition to the Director under 37 C.F.R. §2.146  must be personally signed by the individual petitioner, someone with legal authority to bind a juristic petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14  ("qualified practitioner").  37 C.F.R. §2.146(c).  See TMEP §602 regarding persons authorized to represent a party before the USPTO, and TMEP §§611.06–611.06(h) for guidelines on persons with legal authority to bind various types of legal entities.

Petitions to the Director under 37 C.F.R. §2.146  are often accompanied by separate verifications, signed by someone with firsthand knowledge of the facts to be proved on petition.   See TMEP §1705.03.  However, the petition itself must be separately signed by a proper party.  If the petitioner is represented by a qualified practitioner, the practitioner must sign the petition.  37 C.F.R. §§2.193(e)(5)(i), 11.18(a); TMEP §611.03(e).  If the petitioner is not represented by a qualified practitioner, the petition must be signed by the petitioner or someone with legal authority to bind the petitioner.  37 C.F.R. §§2.146(c), 2.193(e)(5)(ii); TMEP §611.03(e).  In the case of joint petitioners who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(5)(ii); TMEP §611.03(e).

Petitions to revive under 37 C.F.R. §2.66  ( see TMEP §§1714–1714.01(g)) must include a statement that the delay was unintentional, signed by someone with firsthand knowledge.  37 C.F.R. §§2.66(b)(2), (c)(2); TMEP §1714.01(e).  Where a petition to revive under 37 C.F.R. §2.66  consists only of a statement that the delay was unintentional and/or that the applicant did not receive an Office action or notice of allowance, the petition may be signed by someone with firsthand knowledge, and no separate signature by the petitioner, someone with legal authority to bind the petitioner, or a qualified practitioner is required.  However, any response to an Office action accompanying the petition ( see TMEP §§1714.01(a)(i)-(ii)) must be signed by a proper party.  37 C.F.R. §§2.62(b), 11.18(a); TMEP §712.

If it appears that a petition (or a response accompanying a petition) was signed by an improper or excluded party, the staff attorney or paralegal reviewing the petition will follow the procedures in TMEP §§611.05–611.05(c) for processing documents signed by unauthorized parties.

See also TMEP §611.01(c) regarding signature of documents filed electronically.

1705.08    Request for Reconsideration of Denial of Petition

Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may request reconsideration by:  (1) filing the request for reconsideration within two months of the issuance date of the decision denying the petition; and (2) paying a second petition fee under 37 C.F.R. §2.6.

If the petitioner presents new facts that warrant equitable relief, the request for reconsideration may be granted.  Any request for reconsideration that merely reiterates or expands on arguments previously presented will be denied.

Since contested matters must be brought to a conclusion within a reasonable time, a second request for reconsideration of a decision on petition will be granted only in rare situations, when the petitioner presents significant facts or evidence not previously available.   In re Am. Nat'l Bank and Trust Co. of Chi., 33 USPQ2d 1535, 1537 (Comm’r Pats. 1993).

1705.09    Appeal to Federal Court

A registrant who is adversely affected by the Director’s decision regarding a §8 affidavit, §71 affidavit, or §9 renewal application may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on petition.  15 U.S.C. §§1071(a)(1),  (b)(1); 37 C.F.R. §§2.145(a), (c).

Other types of Director’s decisions are not subject to appeal.   See In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 1028, 162 USPQ 106, 109–110 (C.C.P.A. 1969).

The deadline for filing an appeal or commencing a civil action is 63 days from the issuance date of the decision. 15 U.S.C. §1071(a)(2), (b)(1); 37 C.F.R. §2.145(d)(1), (d)(3).