T.M.E.P. § 1714.01
Procedural Requirements for Filing Petition to Revive

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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1714.01 Procedural Requirements for Filing Petition to Revive

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney's Office action are set forth in 37 C.F.R. 2.66(b) and TMEP §1714.01(a). The procedural requirements for filing a petition to revive an application abandoned for failure to timely file a statement of use or request for extension of time to file a statement of use are set forth in 37 C.F.R. 2.66(c) and TMEP §§1714.01(b) and (c) .

When a petition does not meet the procedural requirements of 37 C.F.R. 2.66, a paralegal in the Office of the Commissioner for Trademarks will notify the petitioner that the petition does not meet the requirements of the rule, and grant the petitioner 30 days to supplement the petition by submitting the missing element(s). If the petitioner does not submit the necessary information or fees within the time allowed, the petition will be denied.

1714.01(a) Failure to Timely Respond to an Examining Attorney's Office Action

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney's Office action are listed in 37 C.F.R. 2.66(b). The petition must include all of the following:

(1) The petition fee required by 37 C.F.R. 2.6;

(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional. The statement does not have to be verified; and

(3) Unless the applicant alleges that it did not receive the Office action, the applicant's proposed response to the Office action should accompany the petition.

NOTE: Response to Final Action. The USPTO will not grant a petition to revive an application abandoned for failure to respond to a final Office action unless the applicant submits a proper response, as defined in 37 C.F.R. 2.64(a), or states that it did not receive the Office action. If a petition does not include a proper response to a final action, the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting a proper response to the final action. If the applicant does not submit a proper response within the time allowed, the petition will be denied. After a final action, the only response that an applicant may make as a matter of right is (1) either an appeal to the Trademark Trial and Appeal Board (see TMEP §1501 et seq.) or a petition under 2.63(b), whichever is appropriate, or (2) compliance with any requirement made by the examining attorney. TMEP §715.01. A request for reconsideration is not a proper response to a final action. See TMEP §§715.03 and 1714.01(f)(ii). In some cases, after a final refusal of registration on the Principal Register, an amendment requesting registration on the Supplemental Register or registration under 15 U.S.C. 1052(f) may also be a proper response. See TMEP §§714.05(a)(i) , 816.04 and 1212.02(h).

If the petition states that applicant did not receive the Office action, and the petition is granted, the USPTO will remail the Office action.

See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.

1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. 2.66(c). If the applicant received the notice of allowance, the petition must include all of the following:

(1) The petition fee required by 37 C.F.R. 2.6;

(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional. The statement does not have to be verified;

(3) Either a statement of use under 37 C.F.R. 2.88 or a request for an extension of time to file a statement of use under 37 C.F.R. 2.89;

(4) The required fees for the number of extension requests that the applicant should have filed if the application had never been abandoned;

Example: If a notice of allowance was issued June 14, 2004, and a petition to revive was filed December 23, 2004, the petition must be accompanied by: (1) either a statement of use or request for an extension of time to file a statement of use, with the required filing fee; and (2) the fee for the first extension request due that was December 14, 2004. These fees are in addition to the standard petition fee; and

(5) Unless a statement of use is filed with or before the petition, the applicant must file any further requests for extensions of time to file a statement of use that become due while the petition is pending, or file a statement of use. See TMEP §1714.01(b)(i).

The USPTO will not grant a petition to revive an intent-to-use application if granting the petition would extend the period for filing the statement of use beyond thirty-six months after the mailing date of the notice of allowance. 15 U.S.C. §§1051(d)(1) and (2); 37 C.F.R. 2.66(d). In these cases, the petition will be denied, and the petition fee will be refunded.

See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.

1714.01(b)(i) Applicant Must File Statement of Use or Further Extension Requests During Pendency of a Petition

Filing a petition to revive does not stay the time for filing a statement of use or further extension request(s). When a petition is granted, the term of the six-month extension that was the subject of the petition runs from the date of the expiration of the previously existing deadline for filing a statement of use. 37 C.F.R. 2.89(g). Thus, a petitioner must either file a statement of use or file additional extension requests as they become due during the pendency of a petition.

If the applicant fails to file a statement of use or further request(s) for extension of time to file the statement of use while the petition is pending, the USPTO will give the applicant an opportunity to perfect the petition by paying the fees for each missed extension request and filing a copy of the last extension request, or statement of use, that should have been filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762 (Comm'r Pats. 1997).

1714.01(c) Notice of Allowance Not Received

To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. 2.66(c). If the applicant did not receive the notice of allowance, the petition must include the following:

(1) The petition fee required by 37 C.F.R. 2.6; and

(2) A statement, signed by someone with firsthand knowledge of the facts, that the applicant did not receive the notice of allowance, and that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional. The statement does not have to be verified.

If the applicant did not receive the notice of allowance, it is not necessary to file a statement of use or request for an extension of time to file a statement of use, or the fees for the number of extension requests that would have been due if the application had never been abandoned. 37 C.F.R. §§2.66(c)(3) and (4). If the petitioner files an extension request with a petition that alleges nonreceipt of the notice of allowance, the USPTO will cancel the notice of allowance, refund the filing fee for the extension request, and forward the file to the Publication and Issue Section of the USPTO to reissue the notice of allowance.

If the petitioner files a statement of use with a petition that alleges nonreceipt of the notice of allowance, the USPTO will give the petitioner the option of: (1) having the notice of allowance cancelled and reissued, and the filing fee for the statement of use refunded; or (2) paying the additional filing fees for the extension requests that would have been due if the application had never been abandoned, so that the statement of use can be processed.

1714.01(d) Timeliness and Diligence

Under 37 C.F.R. 2.66(a), a petition to revive an abandoned application must be filed: (1) within two months of the mailing date of the notice of abandonment; or (2) within two months of actual knowledge of the abandonment, if the applicant did not receive the notice of abandonment, and the applicant was diligent in checking the status of the application. See TMEP §1705.04 regarding petition timeliness, and TMEP §1705.05 regarding an applicant's duty to exercise due diligence in monitoring the status of an application. If a petition is untimely, or if the applicant was not diligent, the USPTO will deny the petition and refund the petition fee. To be considered diligent, the applicant should 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. §§2.66(a)(2) and 2.146(i)(1).

The applicant may file a petition to revive before the applicant receives the notice of abandonment.

1714.01(e) Signed Statement That Delay Was Unintentional

Under 37 C.F.R. §§2.66(b)(2) and (c)(2), a petition to revive must include a statement, signed by someone with firsthand knowledge of the facts, that the delay in responding to the Office action or notice of allowance was unintentional. This statement does not have to be verified.

Except when alleging non-receipt of an Office action or notice of allowance, it is not necessary to explain the circumstances that caused the unintentional delay. If the applicant did not receive the Office action or notice of allowance, this should be stated; no further explanation is necessary.

The USPTO will generally not question the applicant's assertion that the delay in responding to an Office action or notice of allowance was unintentional, unless there is information in the record indicating that the delay was in fact intentional. An example of an intentional delay is when an applicant intentionally decides not to file a response or intent-to-use document because it no longer wishes to pursue registration of the mark, but later changes its mind and decides that it does wish to pursue the application.

See TMEP §804.05 regarding signature of documents filed through TEAS.

1714.01(f) Applicability of Unintentional Delay Standard

1714.01(f)(i) Situations Where the Unintentional Delay Standard Applies

Trademark Rule 2.66 applies only to the "failure" to respond to an Office action or notice of allowance. This includes the failure to meet minimum filing requirements for a statement of use or request for an extension of time to file a statement of use.

The minimum filing requirements for a statement of use are listed in 37 C.F.R. 2.88(e): (1) the fee for at least a single class of goods or services; (2) at least one specimen or facsimile of the mark as used in commerce; and (3) a verification or declaration signed by the applicant stating that the mark is in use in commerce.

The minimum filing requirements for a request for extension of time to file a statement of use are: (1) a verified statement that the applicant has a continued bona fide intention to use the mark in commerce; (2) a specification of the goods or services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. In re El Taurino Restaurant, Inc., 41 USPQ2d 1220, 1222 (Comm'r Pats. 1996).

An applicant who fails to meet the minimum filing requirements for a statement of use or request for an extension of time to file a statement of use has, in effect, not filed the statement of use or extension request. Therefore, if the failure to meet the minimum filing requirements was unintentional, the applicant may file a petition to revive under 15 U.S.C. 1051(d)(4) and 37 C.F.R. 2.66.

An applicant may also file a petition to revive under 37 C.F.R. 2.66 if the applicant timely files a notice of appeal from an examining attorney's final refusal, but unintentionally fails to include the appeal fee required by 15 U.S.C. 1070.

1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does Not Apply

Examining Attorney's Holding of Abandonment for Failure to File Complete Response to Office Action - 37 C.F.R. 2.65(a)

The unintentional delay standard of 37 C.F.R. 2.66 does not apply to an incomplete response to an examining attorney's Office action. Incomplete responses to examining attorneys' Office actions are governed by 37 C.F.R. 2.65(b), which gives the examining attorney discretion to grant an applicant additional time to respond if the applicant's failure to file a complete response is inadvertent. If the examining attorney holds the application abandoned for failure to file a complete response to an Office action, the applicant may file a petition to the Director to review the examining attorney's action under 37 C.F.R. 2.146. The Director will reverse the examining attorney's action only if there is clear error or abuse of discretion. See TMEP §1713.

A request for reconsideration of a final refusal (see TMEP §§715.03 et seq.) that is not accompanied by a proper notice of appeal will be treated as an incomplete response to the final Office action. If the examining attorney denies the request for reconsideration, the time for appeal runs from the mailing date of the final action. TMEP §715.03(c). If the time for appeal has expired, the applicant may not file a petition to revive under 37 C.F.R. 2.66.

Examining Attorney's Refusal of Registration on Ground That Applicant Did Not Meet Statutory Requirements Before Expiration of Deadline For Filing Statement of Use

If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use, as set forth in 37 C.F.R. 2.88(e), the applicant may file a petition to revive under 37 C.F.R. 2.66. However, the applicant may not file a petition to revive under 37 C.F.R. 2.66 if the applicant met the minimum filing requirements of 37 C.F.R. 2.88(e), but the examining attorney later refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use (15 U.S.C. 1051(d); 37 C.F.R. 2.88(b)) on or before the statutory deadline (e.g., because the specimen is unacceptable, the dates of use are subsequent to the deadline for filing the statement of use, or the statement of use was not filed in the name of the owner of the mark). The applicant may appeal the examining attorney's refusal of registration to the Trademark Trial and Appeal Board. See TMEP §§1109.16(a) regarding the requirements that must be met within the statutory period for filing the statement of use.

Registered Marks

Trademark Rule 2.66 applies only to abandoned applications, not to registered marks. If a registrant fails to timely respond to an Office action regarding an affidavit or declaration of use or excusable nonuse under 15 U.S.C. 1058 or §1141k, or a renewal application under 15 U.S.C. 1059, the registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive a rule and accept a late response. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. The Director has no authority to waive a statutory requirement. See TMEP §1708 regarding the waiver of rules.

See TMEP §1712.02 regarding requests to reinstate cancelled or expired registrations.

Dismissal of Appeal for Failure to File a Brief

An applicant cannot file a petition to revive under 37 C.F.R. 2.66 if an application is abandoned because the Board dismisses an appeal for failure to file a brief. In this situation, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief. TBMP §1203.02(a). If the Board denies this motion, the applicant may file a petition to the Director under 37 C.F.R. 2.146, asking the Director to reverse the Board's order. The petition must be filed within thirty days of the mailing date of the Board's order. 37 C.F.R. 2.6(e)(2). The Director will reverse the Board's action only if the Board clearly erred or abused its discretion.

1714.01(g) Request for Reconsideration of Denial of Petition to Revive

Under 37 C.F.R. 2.66(f), if a petition to revive is denied, the applicant may request reconsideration by: (1) filing the request for reconsideration within two months of the mailing date of the decision denying the petition; and (2) paying a second petition fee under 37 C.F.R. 2.6. See TMEP §1705.08.