1705.05    Due Diligence

37 C.F.R. 2.23  (Extract) Requirement to correspond electronically with the Office and duty to monitor status.

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  • (d) Notices issued or actions taken by the USPTO are displayed in the USPTO's publicly available electronic systems. Applicants and registrants are responsible for monitoring the status of their applications and registrations in the USPTO's electronic systems during the following time periods:
  • (1) At least every six months between the filing date of the application and issuance of a registration;
  • (2) After filing an affidavit of use or excusable nonuse under section 8 or section 71 of the Act, or a renewal application under section 9 of the Act, at least every six months until the registrant receives notice that the affidavit or renewal application has been accepted; and
  • (3) After notice of the institution of an expungement or reexamination proceeding under § 2.92, at least every three months until the registrant receives a notice of termination under § 2.94.

Applicants and registrants are responsible for tracking the status of matters pending before the USPTO.  37 C.F.R. §2.23(d); TMEP §108.03. 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 is responsible for checking the matter’s status and requesting corrective action, if necessary. 37 C.F.R. §2.23(d).

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 https://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 USPTO, 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, then the applicant or registrant is responsible for promptly requesting corrective action in writing.

If an application has been abandoned, a petition to revive under 37 C.F.R. §2.66  (if not due to USPTO error) or request for reinstatement under 37 C.F.R. §2.64(a)  (if due to USPTO error) must 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 USPTO error) or formal petition under 37 C.F.R. §2.146  (if not due to USPTO error) should generally be filed through TEAS. See TMEP §1712. See TMEP §301.02 regarding the limited exceptions for paper submissions.

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).

These deadlines 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.