TMEP 1109.02(a): Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements

October 2017 Edition of the TMEP

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1109.02(a)    Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements

If the ITU staff determines that a statement of use does not meet the minimum filing requirements of 37 C.F.R. §2.88(c), and there is no time remaining in the statutory filing period the application is abandoned. The applicant’s recourse is as follows:

  • Petition to Revive Under 37 C.F.R. §2.66.  If the applicant unintentionally failed to comply with the minimum filing requirements, the applicant may file a petition to revive under 37 C.F.R. §2.66 by not later than two months after the issue date of the notice of abandonment or two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under §2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment..  See TMEP §§1714–1714.01(g) regarding petitions to revive.
  • Request for Reinstatement Under 37 C.F.R §2.64.  If the applicant has proof that shows on its face that the statement of use met the minimum requirements when filed, the applicant may request reinstatement by not later than two months after the issue date of the notice of abandonment or two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under §2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment.  For example, if the statement of use is rejected due to the omission of a specimen or fee, and the applicant has proof that shows on its face that the missing element was included, the applicant may request reinstatement.  No fee is required.  See TMEP §1712 regarding requests for reinstatement.
  • Petition Under 37 C.F.R. §2.146.  If the applicant contends that the statement of use met the minimum requirements of 37 C.F.R. §2.88(c) when filed but was improperly denied by the ITU staff, and the applicant does not have proof that shows on its face that the statement of use was complete when filed (see TMEP §1712.01), the applicant may file a petition under 37 C.F.R. §2.146(a)(3), asking the Director to review the action of the ITU staff.  The petition must be filed by not later than two months after the issue date of the notice of abandonment or two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under §2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment. The petition must include the petition fee required by 37 C.F.R. §2.6, proof in the form of an affidavit or declaration under 37 C.F.R. §2.20, and any available evidence showing that the statement of use was complete when filed. 37 C.F.R. §2.146(c), (d). See TMEP §1705.03 regarding proof of facts on petition.

No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance. See 15 U.S.C. §1051(d)(2).