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).