T.M.E.P. § 1606.14
Petition Under 37 C.F.R. 2.146

Executive summary:

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1606.14 Petition Under 37 C.F.R. 2.146

The action of an examiner on a §9 renewal application may not be appealed to the Trademark Trial and Appeal Board, but the registrant may file a petition for review of the examiner's action under 37 C.F.R. §§2.146(a)(2) and 2.186(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c). See TMEP §Chapter 1700 regarding petitions.

1606.14(a) Response to Examiner's Refusal Required Before Petition

A response to the examiner's initial refusal to accept a renewal application 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. 2.186(a).

If the examiner continues the refusal of the renewal application, the registrant may file a petition for review of the 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 expire. 37 C.F.R. 2.186(b).

1606.14(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 of the decision (see TMEP §1606.14(c)) , or an appeal to federal court (see TMEP §1606.14(d)) within two months of the mailing date of the decision on petition, the registration will expire.

1606.14(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.

1606.14(d) Appeal to Federal Court

The registrant may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on 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. 2.186(c), a decision on petition is necessary before the registrant can file an appeal or commence a civil action in any court.