T.M.E.P. § 1705.05
Due Diligence

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.

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1705.05 Due Diligence

Applicants and registrants are responsible for tracking the status of matters pending before the USPTO. When a petitioner seeks to reactivate an application or registration that was abandoned, cancelled, or expired due to the loss or mishandling of documents sent to or from the USPTO, the USPTO may deny the petition if the petitioner was not diligent in checking the status of the application or registration, even if the petitioner can show that the USPTO actually received documents, or declares that a notice from the USPTO was never received by the petitioner.

The required showing of diligence is necessary to protect third parties who may be harmed by the removal and later reinsertion of an application or registration into the USPTO's database. For example, a third party may have diligently searched USPTO records and begun using a mark because the search showed no earlier-filed conflicting marks, or an examining attorney may have searched USPTO records and approved a later-filed application for a conflicting mark because the examining attorney was unaware of the earlier-filed application.

The USPTO generally processes applications, responses and other papers in the order in which they are received. Since it is reasonable to expect some notice from the USPTO about a pending matter within six months of the filing or receipt of a document, a party who has not received the expected written action or telephone call from the USPTO within that time frame should be on notice that the filing may have been lost. The party awaiting notification has the burden of inquiring as to the cause of the delay, and requesting corrective action in writing when necessary.

To be considered diligent, a petitioner must:

• Check the status of a pending application every six months between the filing date of the application and issuance of a registration;

• Check the status of a registration every six months after filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Trademark Act, until the petitioner receives notice that the affidavit or renewal application has been accepted; and

• Promptly request corrective action in writing where necessary.

37 C.F.R. 2.146(i). See notice at 68 FR 55748 (Sept. 26, 2003).

Applicants and registrants are encouraged to check the status on each six-month anniversary of the filing of an application for registration, §8 affidavit or §9 renewal application to avoid abandonment or cancellation and to ensure that they meet the diligence requirement. For example, if an application was filed on November 1, 2004, the applicant should check the status on May 1, 2005, November 1, 2005, and on each six-month anniversary thereafter, until a registration is issued.

However, to provide applicants, registrants and their attorneys with flexibility in docketing deadlines for both responses and status checks, an applicant or registrant will meet the diligence requirement if it checks the status within six months of the filing or receipt of a paper for which further action by the USPTO is expected.

Applicants and registrants can check the status of an application or registration through the Trademark Applications and Registrations Retrieval ("TARR") database on the USPTO website at http://tarr.uspto.gov, which is available 24 hours a day, seven days a week. The party should print the TARR screen and place it in the party's own file, in order to have a record of the status inquiry and the information learned.

A party who does not have access to the Internet can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to determine the status. After making a telephone status inquiry, a party should make a note in the party's own file as to the date of the status inquiry and the information learned. No further documentation is required to establish that the status inquiry was made. Written status inquiries are discouraged, because they may delay processing of the application or registration.

If a status inquiry reveals that a paper was not received, or that some other problem exists, corrective action should be promptly requested in writing. 37 C.F.R. 2.146(i)(3). Petitions should be directed to the Office of the Commissioner for Trademarks. Requests for reinstatement should be directed to the Paralegal Specialists in the Office of the Commissioner for Trademarks, the supervisory legal instruments examiner in the law office, or the supervisor of the ITU Unit or Post Registration Section. See TMEP §§1712 et seq. regarding requests for reinstatement.

Where a registrant has proof that a USPTO error caused a registration to expire or be cancelled due to failure to file an affidavit or declaration of use or excusable nonuse under 15 U.S.C. 1058 ("8 affidavit"), a renewal application under 15 U.S.C. 1059, or a response to an examiner's Office action refusing to accept a §8 affidavit or renewal application, the registrant may file a request for reinstatement. See TMEP §1712.02 regarding the types of proof of USPTO error that will support a request for reinstatement. Generally, where there is proof that a registration was cancelled solely due to a USPTO error, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status of the §8 affidavit or renewal application. However, if a registrant receives a written notice of cancellation, or has actual notice that a registration was cancelled, the USPTO will deny the request for reinstatement as untimely if it was not filed (1) within two months of the mailing date of the cancellation notice, or (2) within two months of actual notice of cancellation, if the registrant did not receive a written cancellation notice. 37 C.F.R. 2.146(d).

A request to reinstate an application abandoned due to USPTO error (see TMEP §1712.01) will be denied if the applicant was not diligent in monitoring the status of the application.