T.M.E.P. § 1708
Waiver of Rules

Executive summary:

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1708 Waiver of Rules

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, when (1) an extraordinary situation exists, (2) justice requires, and (3) no other party is injured.

All three of the above conditions must be satisfied before a waiver will be granted, and the burden is on the petitioner to show that the situation is extraordinary. Disasters like fires, hurricanes and snow storms are considered to be extraordinary situations. Extraordinary circumstances have also been found in certain cases where a petitioner avers by affidavit or declaration that it did not receive an Office action issued regarding an affidavit of use under 15 U.S.C. 1058 or renewal application under 15 U.S.C. 1059.

On the other hand, oversights and inadvertent errors that could have been avoided with the exercise of reasonable care are not considered to be "extraordinary situations." In re Universal Card Group, Inc., 25 USPQ2d 1157 (Comm'r Pats. 1992) (docketing error not extraordinary situation); In re Merck & Co., Inc., 24 USPQ2d 1317 (Comm'r Pats. 1992) (inadvertent misidentification of serial number in request for extension of time to oppose not extraordinary situation); In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm'r Pats. 1990) (typographical error not extraordinary situation).

A change of attorneys is not considered to be an extraordinary situation, In re Unistar Radio Networks, Inc., 30 USPQ2d 1390 (Comm'r Pats. 1993), nor is a misunderstanding or lack of awareness of the requirements of the Rules of Practice considered extraordinary. In re Buckhead Marketing & Distribution, Inc., 71 USPQ2d 1620 (Dir USPTO 2004) (applicant's lack of knowledge of application filing fee increase not extraordinary situation); B and E Sales Co. Inc. v. Andrew Jergens Co., 7 USPQ2d 1906 (Comm'r Pats. 1988); Gustafson v. Strange, 227 USPQ 174 (Comm'r Pats. 1985). Errors by attorneys are imputed to the client and the client is bound by the consequences. In re Sotheby's Inc., 18 USPQ2d 1969 (Comm'r Pats. 1991).

Mail delays are not considered extraordinary, because the Trademark Rules of Practice provide procedures designed to avoid lateness due to mail delay. In re Sportco, Inc., 209 USPQ 671 (Comm'r Pats. 1980); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm'r Pats. 1978). See 37 C.F.R. 2.197 regarding certificates of mailing.

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. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).