T.M.E.P. § 1712.01
Reinstatement of Applications Abandoned Due to Office Error
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 (§1712) | Next Section (§1712.02)
1712.01 Reinstatement of Applications Abandoned Due to Office Error
If an application was inadvertently abandoned due to a USPTO error, an applicant may file a request to reinstate the application, instead of a formal petition to revive. There is no fee for a request for reinstatement. Such a request should be captioned as a "Request for Reinstatement." Requests for reinstatement are handled by the Paralegal Specialists in the Office of the Commissioner for Trademarks, or by the supervisory legal instruments examiner in the ITU Unit or the law office to which the application is assigned.
The following are examples of situations where the USPTO may reinstate an application that was held abandoned for failure to timely file a statement of use or response to an Office action:
(1) The applicant presents proof that a response to an Office action, statement of use or request for extension of time to file a statement of use was timely filed through TEAS, in the form of a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the submission.
(2) There is an image of a timely-filed response to Office action, statement of use, or request for extension of time to file a statement of use in TICRS.
(3) The timely-filed correspondence is found in the USPTO.
(4) The applicant supplies a copy of the correspondence and proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. 2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
(5) The applicant supplies a copy of the correspondence and proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of facsimile transmission requirements of 37 C.F.R. 2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
(6) The applicant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the applicant specifically refers to the correspondence at issue (see TMEP §303.02(c)).
(7) The applicant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears an Office date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. 2.20 attesting to the contents of the envelope.
(8) The papers that became lost were accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The request for reinstatement must include an affidavit or declaration under 37 C.F.R. 2.20 that attests to the contents of the correspondence.
(9) The USPTO sent an Office action or notice of allowance to the wrong address due to a USPTO error. A "USPTO error in sending an action or notice to the wrong address" means that the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the mailing date of the action or notice. See TMEP §603.03 regarding the applicant's duty to notify the USPTO when the correspondence address changes.
A request for reinstatement must be filed within two months of the mailing date of the notice of abandonment or, if the applicant has not received a notice of abandonment, within two months of the date the applicant or the applicant's attorney had actual knowledge that the application was abandoned. 37 C.F.R. 2.146(d).
If the applicant did not receive a notice of abandonment, the applicant must have been duly diligent in monitoring the status of the application, or the request for reinstatement will be denied. To be duly diligent, the applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. 2.146(i)(1); TMEP §1705.05.
When an application is reinstated, a computer generated notice of reinstatement is sent to the correspondence address of record. The TRAM System and TARR database are updated accordingly.
If the applicant is not entitled to reinstatement, a request for reinstatement may be considered as a petition to revive. Any petition to revive must meet all the requirements of 37 C.F.R. 2.66. See TMEP §§1714 et seq.