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:

  • Petition to revive an abandoned application – 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));
  • Petition to reverse an examining attorney’s holding of abandonment for failure to file a complete response to an Office action – 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 (see 37 C.F.R §2.146(d)(2)(i) );
  • Petition to review an examining attorney’s formal requirement – by not later than the end of the response period for the Office action maintaining the requirement (15 U.S.C §1062(b); 37 C.F.R §§2.62, 2.63(a), (b) ) (see TMEP §711 regarding the deadline for response to an Office action and §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period);
  • Petition to reinstate a registration and accept a late response to an Office action issued in connection with a timely filed 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 – 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 review a Section 8 or 71 rejection – by not later than six months after the issue date of the 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));
  • Petition to review a Section 7 rejection – by not later than six months after the issue date of the Office action refusing to enter an amendment or correction (37 C.F.R §2.176 );
  • Petition to review the denial of a request for an extension of time to file a notice of opposition – by not later than 15 days after the issue date of the grant or denial of the request (37 C.F.R §2.146(e)(1) );
  • Petition to review an interlocutory order of the Trademark Trial and Appeal Board – by not later than 30 days after the issue date of the order from which relief is requested (37 C.F.R §2.146(e)(2) );
  • Petition to review the denial of certain timely filed paper submissions with statutory deadlines – by not later than two months after the issue date of the notice denying acceptance of the paper filing (37 C.F.R §2.147(b)(2) );
  • 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(e)(1), 2.146(i)(1) );
  • Petition to review the denial of certification of an international application – by not later than 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 denied 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.

On the rare occasions when filing on paper is permitted, petitions mailed to the USPTO by the due date in accordance with 37 C.F.R. §2.197  or §2.198  will be considered timely. See 37 C.F.R. §2.195(b)(1)-(2). See TMEP §§301.02-301.02(e) regarding the limited exceptions for paper submissions, §§305.02-305.02(h) regarding certificate of mailing procedures, and §§305.03-305.03(e) regarding Priority Mail Express® procedures.

See TMEP §1705.05 regarding the duty to exercise due diligence in monitoring the status of pending trademark matters.