1712.02(b) Petition to Reinstate a Cancelled Registration and Accept a Late Response to a Post Registration Office Action
If a registrant failed to timely respond to an Office action refusing to accept a §8 or §71 affidavit or §9 renewal application due to an extraordinary situation, the registrant may file a petition under 37 C.F.R. §2.146(a)(5) and §2.148 requesting the Office to reinstate the registration, if it is cancelled, and accept a late response to the Office action.
See TMEP §§1705-1705.09 regarding the procedure for petitions to the Director.
1712.02(b)(i) Time for Filing Petition
The petition must be filed no later than two months after the date of actual knowledge of the cancellation of the registration, and may not be filed later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired. 37 C.F.R §2.146(d)(2)(ii). In addition, the petition must include a response to the Office action.
1712.02(b)(ii) Standard of Review
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 unintentional delay standard of 37 C.F.R. §2.66 does not apply to registrations; it applies only to pending applications. TMEP §1714.01(f)(ii)(D).
If the registrant did not receive notification of an Office action refusing to accept an affidavit or renewal application, the petition should include a clear statement that the Office action was not received, a statement of facts outlining why the situation is extraordinary, and a complete response to the Office action. 37 C.F.R §§2.146(a)(5) and (c)(1).
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 or §71 affidavit or a §9 renewal application, a petition to extend or waive the statutory deadline will be denied, 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 on or 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), 1606.03(a), 1613.04.