1708 Waiver of Rules
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, when: (1) an extraordinary situation exists; (2) justice requires; and (3) no other party is injured.
All three of the above conditions must be satisfied before a waiver will be granted, and the burden is on the petitioner to show that the situation is extraordinary. Disasters like fires, hurricanes, and snowstorms are considered to be extraordinary situations.
On the other hand, oversights and inadvertent errors that could have been avoided with the exercise of reasonable care are not considered to be extraordinary situations. In re Universal Card Grp., Inc., 25 USPQ2d 1157, 1158 (Comm’r Pats. 1992) (finding that a docketing error not extraordinary situation); In re Merck & Co., 24 USPQ2d 1317, 1318 (Comm’r Pats. 1992) (holding that inadvertent misidentification of serial number in request for extension of time to oppose not extraordinary situation); In re Tetrafluor Inc., 17 USPQ2d 1160, 1162 (Comm’r Pats. 1990) (finding that a typographical error not extraordinary situation).
A change of attorneys is not considered to be an extraordinary situation, In re Unistar Radio Networks, Inc., 30 USPQ2d 1390, 1392 (Comm’r Pats. 1993), nor is a misunderstanding or lack of awareness of the requirements of the Trademark Rules of Practice considered extraordinary. In re Buckhead Mktg. & Distribution, Inc., 71 USPQ2d 1620, 1622–23 (Dir USPTO 2004) (holding that an applicant’s lack of knowledge of application filing fee increase not extraordinary situation); B & E Sales Co. v. Andrew Jergens Co., 7 USPQ2d 1906, 1907–08 (Comm’r Pats. 1988); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pats. 1985). Errors by attorneys are imputed to the client and the client is bound by the consequences. In re Sotheby’s Inc., 18 USPQ2d 1969, 1970 (Comm’r Pats. 1989).
A party will not be excused from compliance with the rules because the results in a particular case may be harsh. See Buckhead, 71 USPQ2d at 1623 (rejecting petitioner’s argument that "justice requires" waiver of the filing date requirements of 37 C.F.R. §2.21 to prevent the loss of priority relative to a conflicting application).
The Director has no authority to waive or suspend the requirement of a rule that is also a requirement of the statute, such as the deadline for filing an affidavit or declaration under §8 or §71 (15 U.S.C. §§1058, 1141k ), or a renewal application under §9 (15 U.S.C. §1059). See Checkers Drive-In Rest., Inc. v. Comm’r of Patents & Trademarks, 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. Cir. 1995), cert. denied, 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit, Congress made no exception for the innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case."); In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) ("Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner."). Therefore, a petition that requests a waiver of a statutory requirement will be dismissed, as the Director lacks authority to grant such a petition.
1708.01 Petition to Waive Domicile Address Requirement
An applicant or registrant ("party") may petition the Director to waive the domicile address requirement of Trademark Rule 2.189 The party must assert an extraordinary situation exists that would justify waiving the rule. . 37 C.F.R §2.146(a)(5), 2.148, 2.189; see TMEP §1708.
Even if the party can establish an extraordinary situation, the party must provide the state, or foreign equivalent, and country of their domicile. When an extraordinary situation is established, the Director will waive only the requirement for the street address of the party’s domicile.
One petition will cover simultaneously pending applications or pending post-registration filings. If, at the time the petition is filed, a party has more than one application pending and/or more than one registration for which there are post-registration maintenance documents (e.g., Section 8 or Section 71 affidavits or declarations, or Section 7 requests) pending, they may file one petition that identifies all of the pending applications and all of the registrations that have pending post-registration submissions. If the petition is granted, the decision will apply to all of the identified applications and/or registrations and will be uploaded into each identified application and/or registration record. If the party files new applications or post-registration maintenance documents for additional registrations while the petition is pending, or after the petition is decided, the party must file a new petition to request a waiver of the domicile address requirement for the newly filed applications and additional registrations.
Granted petition will cover an application or registration throughout its term. A party who filed a petition to waive the domicile address requirement of Rule 2.189 that was granted during the pendency of the application need not file a new petition to waive Rule 2.189 when a post-registration filing is submitted if all of the relevant facts asserted in the initial petition remain unchanged. Similarly, a new petition to waive Rule 2.189 in a registration is not needed if a waiver was previously granted in connection with a post-registration filing. In these cases, the owner must declare in subsequent post-registration filings that all relevant facts asserted in the petition to waive the domicile address requirement, including the state and country of domicile, and the extraordinary situation presented, remain unchanged. This statement must be supported by a declaration under 37 C.F.R §2.20 or 28 U.S.C. §1746. If any relevant fact has changed since the petition was granted, the owner must file a new petition to the Director to waive the domicile address requirement of Rule 2.189.
Petition requirements. The petition must include a statement of the facts relevant to the petition identifying the extraordinary situation that would justify waiving Rule 2.189 supported by a declaration under 37 C.F.R §2.20 or 28 U.S.C. §1746, the state and country of the applicant’s or registrant’s domicile and the appropriate petition filing fee. 37 C.F.R §2.146(c). If more than one application and/or registration is identified in the petition, only one petition filing fee is required. Please note that all information included in the petition will be uploaded into the application or registration record and publicly viewable.
Petition requirements if the party has no fixed physical address. An applicant or registrant may petition the Director to request a waiver of the domicile address requirement if an individual applicant or registrant cannot provide their domicile address because they do not have a fixed permanent legal place of residence or a juristic entity applicant or registrant cannot provide a domicile address because it does not have a fixed physical address for its principal place of business. In such cases, the petition must include a verified statement of facts explaining that the applicant or registrant does not have a fixed physical address for their permanent legal place of residence or principal place of business, as appropriate. The applicant or registrant must still provide the state, or foreign equivalent, and country of their domicile (if an individual), or the state, or foreign equivalent, and country of the domicile of a person with legal authority to bind the applicant or registrant (if a juristic entity), to determine whether the applicant or registrant must be represented by a qualified U.S. attorney.