T.M.E.P. § 1604.18
Petition Under 37 C.F.R. 2.146

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§1604.17) | Next Section (§1604.19)

1604.18 Petition Under 37 C.F.R. 2.146

The action of an examiner on a §8 affidavit may not be appealed to the Trademark Trial and Appeal Board, but the owner may file a petition for review of the examiner's action under 37 C.F.R. §§2.146(a)(2) and 2.165(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c). See TMEP §Chapter 1700 regarding petitions.

1604.18(a) Response to Examiner's Refusal Required Before Petition

A response to the examiner's initial refusal to accept an affidavit or declaration is required before filing a petition, unless the examiner directs otherwise or there is no time remaining to respond to the examiner's refusal. 37 C.F.R. 2.165(a).

If the examiner continues the refusal to accept the affidavit or declaration, the owner may file a petition for review of the examiner's action under 37 C.F.R. 2.146(a)(2) within six months of the mailing date of the action continuing the refusal. If no petition is filed within six months, the registration will be cancelled. 37 C.F.R. 2.165(b).

1604.18(b) Decision on Petition is Final Action of the Office

The decision on a petition under 37 C.F.R. 2.146 is the final action of the USPTO. In the absence of a request for reconsideration (see TMEP §1604.18(c)) , or an appeal to an appropriate court (see TMEP §1604.18(d)) within two months of the mailing date of the decision on petition, the registration will be cancelled.

1604.18(c) Request for Reconsideration of Denial of Petition

Under Trademark Rule 2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the mailing date of the decision denying the petition. A second petition fee must be paid with the request for reconsideration. See TMEP §1705.08 regarding requests for reconsideration of petition decisions.

1604.18(d) Appeal to Federal Court

The owner of the registration may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition. 15 U.S.C. §§1071(a)(1) and (b)(1); 37 C.F.R. §§2.145(a) and 2.145(c).

The deadline for filing an appeal or commencing a civil action is two months from the mailing date of the decision on petition. 15 U.S.C. §§1071(a)(2) and (b)(1); 37 C.F.R. 2.145(d)(1). Under 37 C.F.R. 2.145(d)(2), one day is added to any two-month period that includes February 28.

Under 37 C.F.R. 2.165(c), a decision on petition is necessary before the owner can file an appeal or commence a civil action in any court.