TMEP 1108.04: Recourse After Denial of Extension Request

October 2017 Edition of the TMEP

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1108.04    Recourse After Denial of Extension Request

If an extension request is denied, the applicant will be notified of the reason(s) for the denial.

To avoid abandonment of the application, the applicant must meet the minimum requirements for filing the extension request on or before the deadline for filing a statement of use.

If the USPTO denies the extension request because the applicant failed to meet minimum filing requirements on or before the statutory deadline, and there is time remaining in the applicant’s existing period for filing the statement of use, the applicant may file the statement of use and/or a substitute extension request.  Otherwise, the applicant’s only recourse after denial of the extension request is a petition under 37 C.F.R. §§2.89(g) and 2.146, or a petition to revive under 37 C.F.R. §2.66, if appropriate.  See TMEP §1108.05 regarding petitions that may be filed after the denial of an extension request.

For a trademark or service mark, the minimum filing requirements for an extension request that must be satisfied before expiration of the statutory deadline are: (1) a verified statement, signed by the applicant or a person properly authorized to sign on behalf of the applicant, that the applicant has a continued bona fide intention to use the mark in commerce; (2) an identification of the goods/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 Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996).

For a collective mark or certification mark, the minimum filing requirements for an extension request that must be satisfied before expiration of the statutory deadline are: (1) a verified statement, signed by a person properly authorized to sign on behalf of the applicant, that the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; (2) an identification of the goods/services/collective membership organization on or in connection with which the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. Cf. In re El Taurino Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996).