1712 Reinstatement of Applications and Registrations

1712.01 Reinstatement of Applications Abandoned Due to Office Error

If an applicant has proof that an application was inadvertently abandoned due to a USPTO error, an applicant may file a request to reinstate the application, instead of a formal petition to revive. 37 C.F.R §2.64(a) There is no fee for a request for reinstatement. To ensure proper routing and processing, the Office prefers that the request be filed electronically. In TEAS, the Request for Reinstatement form can be accessed by clicking on the link entitled "Petition Forms" at http://www.uspto.gov.

The following are examples of situations where the USPTO may reinstate an application that was held abandoned for failure to timely file a statement of use or response to an Office action or that was held abandoned in total after a partial refusal or requirement (see 37 C.F.R §2.64(a)(2) ):

(1) The applicant presents proof that a response to an Office action, statement of use, or request for extension of time to file a statement of use was timely filed through TEAS, in the form of a copy of a TEAS "Success" page confirming receipt of the application ( see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) There is an image of the timely filed response, statement of use, or extension request in TICRS.
(3) The timely filed document is found in the USPTO.
(4) The applicant supplies a copy of the document and proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
(5) The applicant supplies a copy of the document and proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of facsimile transmission requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
(6) The applicant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the applicant specifically refers to the document at issue (see TMEP §303.02(c)).
(7) The applicant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The request for reinstatement must include an affidavit or declaration under 37 C.F.R. §2.20 that attests to the contents of the filing.
(9) The USPTO sent an Office action or notice of allowance to the wrong address due to a USPTO error, i.e., the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the issuance date of the action or notice. See TMEP §609.03 regarding the applicant’s duty to notify the USPTO when the correspondence address changes.
(10) An application is abandoned in full for failure to respond to an Office action or for an incomplete response to a final Office action when the Office action states that the refusal or requirement applies to only certain goods, services, and/or classes. See TMEP §718.02(a).
(11) An application is abandoned in total after a refusal or requirement that applies to only certain goods, services, and/or classes is upheld on appeal or when the applicant withdraws or fails to prosecute an appeal of a refusal or requirement that applies to only certain goods, services, and/or classes to the Board. See TMEP §718.02(a).

The applicant must file a request for reinstatement by not later than two months after the issue date of the notice of abandonment. 37 C.F.R §2.64(a)(1)(i). If the applicant did not receive the notice of abandonment, the applicant must file the request by not later than 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. 37 C.F.R §2.64(a)(1)(ii). The request must also include a properly signed declaration under 37 C.F.R §2.20 or 28 U.S.C. §1746 stating that the applicant did not receive the notice of abandonment. Id.

When an application is reinstated, a computer-generated notice of reinstatement is sent to the correspondence address of record and the Trademark electronic records system is updated accordingly.

If the applicant is not entitled to reinstatement, a request for reinstatement may be considered as a petition to revive or a petition to the Director and must meet all the requirements of 37 C.F.R. §2.66 or 37 C.F.R §2.146. See TMEP §§1702–1708 and TMEP §§1714–1714.01(g).

1712.02 Reinstatement of Registrations Cancelled or Expired

37 C.F.R. 2.64 Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error.

(a) Request for Reinstatement of an Abandoned Application. The applicant may file a written request to reinstate an application abandoned due to Office error. There is no fee for a request for reinstatement.
- (1) Deadline. The applicant must file the request by not later than:
  - (i) Two months after the issue date of the notice of abandonment; or
  - (ii) 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.
- (2) Requirements. A request to reinstate an application abandoned due to Office error must include:
  - (i) Proof that a response to an Office action, a statement of use, or a request for extension of time to file a statement of use was timely filed and a copy of the relevant document;
  - (ii) Proof of actual receipt by the Office of a response to an Office action, a statement of use, or a request for extension of time to file a statement of use and a copy of the relevant document;
  - (iii) Proof that the Office processed a fee in connection with the filing at issue and a copy of the relevant document;
  - (iv) Proof that the Office sent the Office action or notice of allowance to an address that is not the designated correspondence address; or
  - (v) Other evidence, or factual information supported by a declaration under § 2.20 or 28 U.S.C. 1746, demonstrating Office error in abandoning the application.
(b) Request for Reinstatement of Cancelled or Expired Registration. The registrant may file a written request to reinstate a registration cancelled or expired due to Office error. There is no fee for the request for reinstatement.
- (1) Deadline. The registrant must file the request by not later than:
  - i Two months after the issue date of the notice of cancellation/expiration; or
  - (ii) 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, two months after the date of actual knowledge of the cancellation/expiration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired, where the registrant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of cancellation/expiration or where the Office did not issue a notice.
- (2) Requirements. A request to reinstate a registration cancelled/expired due to Office error must include:
  - i Proof that an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action was timely filed and a copy of the relevant document;
  - (ii) Proof of actual receipt by the Office of an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action and a copy of the relevant document;
  - (iii) Proof that the Office processed a fee in connection with the filing at issue and a copy of the relevant document;
  - (iv) Proof that the Office sent the Office action to an address that is not the designated correspondence address; or
  - (v) Other evidence, or factual information supported by a declaration under § 2.20 or 28 U.S.C. 1746, demonstrating Office error in cancelling/expiring the registration.
(c) Request for Reinstatement May be Construed as Petition. If an applicant or registrant is not entitled to reinstatement, a request for reinstatement may be construed as a petition to the Director under § 2.146 or a petition to revive under § 2.66, if appropriate. If the applicant or registrant is unable to meet the timeliness requirement under paragraphs (a)(1) or (b)(1) of this section for filing the request, the applicant or registrant may submit a petition to the Director under § 2.146(a)(5) to request a waiver of the rule.

1712.02(a) Request for Reinstatement Due to Office Error

A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that a USPTO error caused the registration to be cancelled or expired. 37 C.F.R §2.64(b). There is no fee for a request for reinstatement. However, to ensure proper routing and processing, the USPTO prefers that the request be filed electronically using the "Petition to the Director under Trademark Rule 2.146" form, which can be accessed at http://www.uspto.gov/trademarks/teas/petition_forms.jsp. Although a petition fee is required in order to file the form, it will be refunded if USPTO error is found.

The following are examples of situations where the USPTO may reinstate a cancelled or expired registration (see 37 C.F.R §2.64(b)(2) ):

(1) The registrant presents proof that a proper affidavit or renewal application was timely filed through TEAS, in the form of a copy of a TEAS "Success" page confirming receipt of the document ( see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) There is an image of a timely filed affidavit, renewal application, or response to Office action in TICRS.
(3) The timely filed affidavit, renewal application, or response to Office action is found in the USPTO.
(4) The registrant supplies a copy of the affidavit under §8 or §71, renewal application under §9, or response to Office action, with proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
(5) The registrant supplies a copy of the affidavit under §8 or §71, renewal application under §9, or response to Office action, with proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of transmission requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
(6) The registrant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the registrant specifically refers to the §8 affidavit, §71 affidavit, §9 renewal application, or response ( see TMEP §303.02(c)).
(7) The registrant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The registrant must submit an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the original filing.
(9) The USPTO sent an Office action to the wrong address due to a USPTO error, i.e., the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the issuance date of the action.

The registrant must file a request for reinstatement by not later than two months after the issue date of the notice of cancellation/expiration. 37 C.F.R §2.64(b)(1)(i). If the registrant did not receive a notice of cancellation/expiration or the Office did not issue a notice, the registrant must file the request by not later than two months after the date of actual knowledge of the cancellation/expiration 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 §2.64(b)(1)(ii). The request must also include a properly signed declaration under 37 C.F.R §2.20 or 28 U.S.C. §1746 stating that the registrant did not receive the notice of cancellation/expiration if one was issued. Id.

The Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059 or affidavit of use of a registered mark under 15 U.S.C. §1058. Checkers Drive-In Rest's. Inc. v. Comm'r of Patents & Trademarks, 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995); In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984). Therefore, if the registrant did not timely file a §8 affidavit, §71 affidavit, or §9 renewal application, a request to reinstate a cancelled or expired registration will be dismissed, regardless of the reason for the delay, as the Director lacks authority to grant such a petition.

1712.02(b) Formal Petition

If a registrant is not entitled to reinstatement, a request for reinstatement may be construed as a petition to the Director under 37 C.F.R §2.146, if appropriate. If a registrant failed to timely respond to an Office action refusing to accept a §8 affidavit, §71 affidavit, or §9 renewal application due to an extraordinary situation, the registrant may file a formal petition under 37 C.F.R. §§2.146(a)(5) and 2.148 to accept a late response.

1712.02(b)(i) Time for Filing Petition

Pursuant to 37 C.F.R. §2.146(d)(1), the petition must be filed by not later than two months after the issue date of the cancellation/expiration notice. If the registrant did not receive the cancellation/expiration notice, or no notice was issued, the petition must be filed by not later than two months after the date of actual knowledge of the cancellation/expiration of the registration 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)(2). See TMEP §§1705.04 and 1705.05 regarding timeliness and diligence.

1712.02(b)(ii) Standard of Review

The unintentional delay standard of 37 C.F.R. §2.66 does not apply to registered marks. TMEP §1714.01(f)(ii)(D). Under 37 C.F.R. §§2.146(a)(5) and 2.148, the Director may waive any provision of the rules that is not a provision of the statute, only when an extraordinary situation exists, justice requires, and no other party is injured. See TMEP §1708 for further discussion of conditions for waiver of rules. The failure to receive an Office action is considered an extraordinary situation that justifies a waiver of a rule. Therefore, if the registrant did not receive an Office action refusing to accept an affidavit or renewal application, but the registrant does not have proof that non-receipt was due to USPTO error ( see TMEP §1712.02(a), paragraph 9), the registrant may file a formal petition under 37 C.F.R. §2.146. The petition should include a clear statement that the Office action was not received and either a complete response to the Office action, to expedite acceptance of the maintenance filing, or a request that the Office action be reissued.

If the petition does not include a clear statement that the Office action was not received and either a complete response or request to reissue the Office action, the USPTO will notify the petitioner that this information is required, and grant the petitioner 30 days to submit the information. If the petitioner does not submit this information within the time allowed, the petition will be denied because the petitioner did not meet the requirements for filing a petition and the registration will remain cancelled. See 37 C.F.R. §2.146(c).

1712.02(b)(iii) No Authority to Waive Statutory Requirements

As noted in TMEP §1708, the Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059 or affidavit of use of a registered mark under 15 U.S.C. §1058. Therefore, if the registrant did not timely file a §8 affidavit, §71 affidavit, §9 renewal application, a petition to extend or waive the statutory deadline will be dismissed, regardless of the reason for the delay.

If a registrant contends that a proper affidavit or renewal application was timely filed, but the registrant does not have proof that the affidavit or renewal application was received in the USPTO before the due date, the Director will not grant a petition to accept the affidavit or renewal application.

Similarly, if a registrant files a premature affidavit or renewal application, and does not file a newly executed affidavit or renewal application within the statutory filing period (which includes the grace period), the Director will not grant a petition to accept the premature affidavit or renewal application. See TMEP §§1604.04(a) and 1606.03(a).

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