TMEP 1611: Updating Automated Records to Show the Status of Registrations

This is the October 2015 Edition of the TMEP

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1611    Updating Automated Records to Show the Status of Registrations

USPTO records will be automatically updated to indicate the status of registrations as follows:

  • (1) When the owner of a registration timely files a §8 or §71 affidavit or declaration and/or §9 renewal application, USPTO records are updated to indicate receipt of the document and the action taken on it. This information appears in the Trademark database.
  • (2) If no §8 or §71 affidavit or declaration is filed before the end of the grace period (see TMEP §§1604.04 and 1613.04 regarding the deadlines for filing §8 and §71 affidavits or declarations), USPTO records are automatically updated to indicate that the registration is cancelled, and this information appears in the Trademark database. However, USPTO records are not updated to show that the registration is cancelled until 30 days after the expiration of the grace period.
  • (3) If no §9 renewal application is filed before the end of the grace period (see TMEP §1606.03 regarding the deadline for filing a renewal application), USPTO records are automatically updated to indicate that the registration is expired, and this information appears in the Trademark database. However, USPTO records are not updated to show that the registration is expired until 30 days after the expiration of the grace period.

The reason the USPTO waits until 30 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired is to avoid inadvertent cancellation or expiration of a registration due to a delay in entering a timely filed §8 or §71 affidavit or declaration or §9 renewal application into USPTO records. If an examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired. If a party other than the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the party should contact the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 and request that the database be updated to show that the registration is cancelled or expired.

If the owner of a registration who has not timely filed a §8 or §71 affidavit or declaration or §9 renewal application wants to expedite cancellation or expiration of its own registration, the owner may request in writing that the USPTO expedite the processing of the cancellation or expiration of the registration. The request should be signed by the owner, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner, and should specifically state that no §8 affidavit or declaration, §71 affidavit or declaration, or §9 renewal application was filed on or before the end of the grace period. Such a request should be directed to the Post Registration Section; if it is sent to the examining attorney, the examining attorney should forward it to the Supervisor of the Post Registration Section.

See TMEP §716.02(e) regarding suspension of an application for a conflicting mark pending cancellation of the cited registration under §8 or §71 of the Act or expiration of the cited registration for failure to renew under §9 of the Act.