TMEP 1703: Specific Types of Petitions

This is the October 2015 Edition of the TMEP

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1703    Specific Types of Petitions

A variety of issues may be reviewed on petition. The following is a list of issues that commonly arise:

Petitions to Restore an Application Filing Date. See TMEP §1711.

Petitions to Make Special. See TMEP §1710.

Petitions to Reverse an Examining Attorney’s Holding of Abandonment for Failure to File a Complete Response to an Office Action are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1713.

Petitions to Revive an Application Abandoned Due to Unintentional Delay in Responding to an Office Action or Notice of Allowance are considered under 37 C.F.R. §2.66. See TMEP §§1714–1714.01(g).

Petitions to Restore Jurisdiction to the Examining Attorney may be filed by the applicant under 37 C.F.R. §2.84, when the examining attorney does not have jurisdiction to review an amendment to the application. See TMEP §§1504–1504.05.

Petitions to Review the Action of an Examining Attorney. A petition to review an examining attorney’s formal requirement may be filed under 37 C.F.R. §§2.63(a) and (b) and 2.146(a)(1), if the requirement is repeated or made final and the subject matter is appropriate for petition. See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review.

Petitions to Review the Action of the Post Registration Staff may be filed if an affidavit of use or excusable nonuse is refused under 15 U.S.C. §1058 or §1141k, a renewal application is refused under 15 U.S.C. §1059, or a proposed amendment or correction is refused under 15 U.S.C. §1057. See 37 C.F.R. §§2.165, 2.176, 2.186; TMEP §§1604.18, 1606.14, 1613.18.

Petitions to Review the Refusal of the Madrid Processing Unit to Certify an Application for International Registration are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1902.03(a).

Petitions to Reverse a Nonfinal Decision of the Trademark Trial and Appeal Board (37 C.F.R. §2.146(e)(2)) are reviewed under the standard of clear error or abuse of discretion, if the subject matter is appropriate for consideration on petition. Riko Enters,, Inc. v. Lindsley, 198 USPQ 480 (Comm’r Pats. 1977). See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §§901.02(a), 905.

Petitions to Review a Decision to Deny or Grant a Request for an Extension of Time to Oppose (37 C.F.R. §2.146(e)(1)) are reviewed to determine whether the Board correctly applied 37 C.F.R. §§2.101 and 2.102.

Petitions to Add or Substitute a Basis After Publication are reviewed under 37 C.F.R. §2.146(a)(2). See 37 C.F.R. §2.35(b)(2); TMEP §§806.03(j)-806.03(j)(iii).

Petitions to Abandon an Affidavit or Declaration of Incontestability Under §15 of the Trademark Act, 15 U.S.C. §1065, are reviewed under 37 C.F.R. §2.146(a)(3). See 37 C.F.R. §2.167(j); TMEP §§1605, 1605.03, 1704, 1707.

Petitions to Reissue or Accept a Late Response to a Post Registration Office Action Due to Non-Receipt are reviewed under 37 C.F.R. §§2.146(a)(5) and 2.148. See TMEP §§1604.16, 1606.12, 1613.16, 1708, 1712.02(b).

See TMEP §1607 and TBMP §§303, 307, 308, and 309 regarding petitions to cancel registrations under 15 U.S.C. §1064, which are handled by the Board.