T.M.E.P. § 1109.02
Review for Compliance with Minimum Filing Requirements

Executive summary:

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1109.02 Review for Compliance with Minimum Filing Requirements

Statements of use are reviewed by the ITU/Divisional Unit to determine whether they are timely and in compliance with the minimum requirements listed in 37 C.F.R. 2.88(e). If the statement of use is untimely, either because it is premature or late, the ITU paralegal will notify the applicant that the statement of use cannot be considered because it is late, and refund the filing fee.

If the statement of use is timely, but does not comply with one or more of the minimum filing requirements of 37 C.F.R. 2.88(e), the ITU paralegal will notify the applicant of the defect and will advise the applicant that the Office will not examine the statement of use on the merits unless the applicant can correct the defect before expiration of the deadline for filing a statement of use.

If the applicant does not correct the deficiency before the expiration of the statutory deadline, the application will be declared abandoned. In such a case, the Office will not refund the filing fee.

The paralegal will review the verification or declaration stating that the mark is in use in commerce to determine whether it bears a signature, but will not question the authority of the person who signed. See TMEP §1109.11(a) regarding the proper party to sign on behalf of applicant.

The ITU paralegal will not determine whether the statement of use was filed by the record owner of the application. That issue will be addressed by the examining attorney. See TMEP §1109.10.

The applicant may not withdraw the statement of use and return the application to the previous status of awaiting filing of the statement of use, even if the statement of use fails to meet the minimum filing requirements. 37 C.F.R. 2.88(g); TMEP §1109.17.

However, to gain additional time to comply with the minimum requirements, the applicant may file a final ("insurance") extension request with or after the filing of a statement of use, if there is time remaining in the statutory period for filing the statement of use, provided that granting the extension request would not extend the time for filing the statement of use beyond thirty-six months from the issuance of the notice of allowance. 37 C.F.R. 2.89(e)(1); TMEP §1108.03.

1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements of 37 C.F.R. 2.88(e)

If the ITU paralegal determines that a statement of use does not meet the minimum requirements of 37 C.F.R. 2.88(e), and there is no time remaining in the statutory filing period, applicant's recourse is as follows:

• Petition to Revive Under 37 C.F.R. 2.66. If the applicant unintentionally failed to comply with the minimum filing requirements, the applicant may file a petition to revive under 37 C.F.R. 2.66 within two months of the mailing date of the Office action notifying the applicant that the statement of use is deficient. See TMEP §§1714 et seq. regarding petitions to revive.

• Request for Reinstatement. If the applicant has proof that shows on its face that the statement of use met the minimum requirements when filed, the applicant may request reinstatement, within two months of the mailing date of the Office action notifying the applicant that the statement of use is deficient. For example, if the statement of use is rejected due to the omission of a specimen or fee, and the applicant has proof that shows on its face that the missing element was included, the applicant may request reinstatement. No fee is required. The request should be directed to the ITU Unit. See TMEP §1712.01 regarding the types of evidence that support reinstatement.

• Petition Under 37 C.F.R. 2.146. If the applicant contends that the statement of use met the requirements of 37 C.F.R. 2.88(e) when filed but was improperly denied by the ITU paralegal, and the applicant does not have proof that shows on its face that the statement of use was complete when filed (see TMEP §1712.01) , the applicant may file a petition under 37 C.F.R. 2.146(a)(3), asking the Director to review the action of the paralegal. The petition must be filed within two months of the mailing date of the Office action notifying the applicant that the statement of use is deficient, and must include the petition fee required by 37 C.F.R. 2.6, a copy of the papers filed, proof in the form of an affidavit or declaration under 37 C.F.R. 2.20, and any available evidence showing that the statement of use was complete when filed. See TMEP §1705.03 regarding proof of facts on petition.

No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance. 15 U.S.C. 1051(d)(2).