T.M.E.P. § 1712.02
Reinstatement of Registrations Cancelled or Expired Due to Office Error

Executive summary:

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1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error

Request for Reinstatement

A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that USPTO error caused a registration to be cancelled or expired due to failure to file: (1) an affidavit or declaration of use or excusable nonuse under 15 U.S.C. 1058 ("§8 affidavit"); (2) a renewal application under 15 U.S.C. 1059; or (3) a response to an examiner's Office action refusing to accept a §8 affidavit or renewal application. There is no fee for a request for reinstatement. A request that the USPTO reinstate a registration that has been cancelled or expired due to USPTO error should be captioned as a "Request for Reinstatement of Registration," and should be directed to the Supervisor of the Post Registration Section of the Office.

The following are examples of situations where the USPTO may reinstate a cancelled or expired registration:

(1) The registrant presents proof that a proper §8 affidavit or renewal application 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 (see TMEP §301).

(2) There is an image of a timely-filed §8 affidavit, renewal application, or response to Office action in TICRS.

(3) The timely-filed §8 affidavit, renewal application, or response to Office action is found in the USPTO.

(4) The registrant supplies a copy of the §8 affidavit, renewal application, or response with 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 registrant supplies a copy of the §8 affidavit, renewal application, or response, with proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of transmission requirements of 37 C.F.R. 2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).

(6) The registrant 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 registrant specifically refers to the §8 affidavit, renewal application, or response at issue (see TMEP §303.02(c)).

(7) The registrant 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 a USPTO 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 registrant must submit an affidavit or declaration under 37 C.F.R. 2.20 attesting to the contents of the original mailing.

(9) The USPTO sent an Office action to the wrong address due to an Office error. A "USPTO error in sending an action 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.

(10) The registrant supplies a copy of a response to an Office action, with proof that it was timely transmitted to the USPTO by Internet e-mail and accompanied by a certificate of transmission under 37 C.F.R. 2.197. See notice at 64 Fed. Reg. 33056, 33063 (June 21, 1999). NOTE: Section 8 affidavits and renewal applications cannot be filed by e-mail. TMEP §304.02.

Generally, where there is proof that a registration was cancelled solely due to 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 (see TMEP §1705.05). 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). See TMEP §1705.04 regarding timeliness.

Formal Petition

If a registrant unintentionally failed to timely respond to an examiner's Office action refusing to accept a §8 affidavit or renewal application, but the registrant does not have the proof of USPTO error that would support a request for reinstatement, the registrant may file a formal petition under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive a rule and accept a late response. Pursuant to 37 C.F.R. 2.146(d), the petition must be filed within two months of the cancellation notice. If the registrant did not receive the cancellation notice, the petition must be filed within two months of the date of actual notice of the cancellation, and the record must show that the registrant was diligent in monitoring the status of the registration, pursuant to 37 C.F.R. 2.146(i). See TMEP §§1705.04 and 1705.05 regarding timeliness and diligence.

The unintentional delay standard of 37 C.F.R. 2.66 does not apply to registered marks. TMEP §1714.01(f)(ii). 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 an extraordinary situation exists, justice requires, and no other party is injured. See TMEP §1708. The failure to receive an Office action is considered an extraordinary situation that justifies a waiver of a rule. Therefore, if the registrant did not receive an examiner's Office action refusing to accept a §8 affidavit or renewal application, but the registrant does not have proof that non-receipt was due to USPTO error (see paragraph 9 above), the registrant may file a formal petition under 37 C.F.R. 2.146.

The Director has no authority to waive a statutory requirement, such as the deadline for filing a §8 affidavit or renewal application. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). Therefore, if the registrant did not timely file a §8 affidavit or renewal application, a petition to extend or waive the statutory deadline will be denied, regardless of the reason for the delay.

If a registrant contends that a §8 affidavit or renewal application was timely filed, but the registrant does not have proof that the §8 affidavit or renewal application was received in the USPTO before the due date, the Director will not grant a petition to accept the affidavit or renewal application.