1704 Petitionable Subject Matter
Ex Parte Examination
Under 37 C.F.R. §§2.63(a) and (b), an applicant may petition the Director to review an examining attorney’s repeated or final requirement if the subject matter of the requirement is appropriate for petition. However, under 37 C.F.R. §2.146(b), "[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions...."
Procedural issues reviewable on petition include: whether a disclaimer was properly printed in standardized format; whether an examining attorney acted properly in suspending an application; whether an examining attorney acted properly in holding an application abandoned for failure to file a complete response to an Office action (see TMEP §1713); and whether it was premature for an examining attorney to issue a final action.
Substantive issues that arise in ex parte examination are not proper subject matter for petition, and may be reviewed only by the Trademark Trial and Appeal Board on appeal. See TMEP §§1501–1501.07 regarding appeal procedure. For example, an examining attorney’s requirement for a special form drawing that agrees with the mark shown on the specimen(s) of record may not be reviewed on petition, because it requires an analysis of the commercial impression of the mark. In re Hart, 199 USPQ 585, 587 (Comm’r Pats. 1978). An examining attorney’s requirement for a disclaimer of a feature of a mark is also improper subject matter for petition. Ex parte Fla. Citrus Canners Coop., 37 USPQ 463 (Comm’r Pats. 1938); Ex parte Kleen-O-Dent Labs., Inc., 37 USPQ 232 (Comm’r Pats. 1938). The question of whether an amendment to a drawing is a material alteration of the mark is not petitionable, but the question of whether USPTO practice permits an applicant to correct an allegedly obvious typographical error on a drawing was found to be reviewable on petition. In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm’r Pats. 1990). The determination of what is appealable and what is petitionable is made on a case-by-case basis.
Some issues that arise in ex parte examination may be reviewed by either petition or appeal. For example, the question of who is a proper signatory of a statement of use or other verification of facts on behalf of an applicant may be reviewed by either petition or appeal. In re Dermahose Inc., 82 USPQ2d 1793, 1795, n.5 (TTAB 2007).
A requirement for amendment of an identification of goods/services may also be reviewed by either petition or appeal. In re Stenographic Machs., Inc., 199 USPQ 313, 316 (Comm’r Pats. 1978). On the other hand, a requirement for amendment of the classification is a procedural matter that may only be reviewed on petition. In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).
If an applicant files a petition from an examining attorney’s formal requirement, the applicant subsequently may not appeal the requirement to the Board. 37 C.F.R. §2.63(c).
See TBMP §1201.05 for further information about appealable versus petitionable subject matter in examination.
Trademark Rule 2.146(b) applies only to questions of substance that arise during ex parte examination of applications for registration. The Director considers questions of substance, such as whether a proposed amendment materially alters a registered mark or whether a specimen supports use of a registered mark, when reviewing the action of the Post Registration staff in connection with a proposed amendment filed under 15 U.S.C. §1057 ("§7 amendment"), or an affidavit of use under 15 U.S.C. §1058 or §1141k ("§8 affidavit" or "§71 affidavit"). The decisions of Post Registration staff under 15 U.S.C. §§1057, 1058, 1059, and 1141k may not be appealed to the Board.
An owner may petition the Director under Trademark Rule 2.146(a)(3), 37 C.F.R. §2.146(a)(3), to request that an affidavit or declaration of incontestability under §15 of the Trademark Act, 15 U.S.C. §1065, be abandoned if the owner determines, after timely filing the affidavit or declaration, that the affidavit or declaration contained an inaccuracy. 37 C.F.R. §2.167(j); see TMEP §§1605, 1605.03, 1707.
Cancellation of a registration for failure to file an affidavit or declaration under §8 or §71 of the Trademark Act (15 U.S.C. §§1058, 1141k), or expiration of a registration for failure to file a renewal application under §9 (15 U.S.C. §1059), does not constitute petitionable subject matter under the "unintentional delay" standard of 37 C.F.R. §2.66. See TMEP §1714.01(f)(ii)(D). Furthermore, a petition under 37 C.F.R. §2.146 requesting that the Director accept a late-filed §8 or §71 affidavit or declaration, or a §9 renewal application, will not be granted because the Director has no authority to waive the deadline for filing these documents. See TMEP §§ 1604.04, 1606.03, 1613.04, 1707. Such petitions will be dismissed since the Director lacks authority to grant them.
Inter Partes Proceedings Before Trademark Trial and Appeal Board
In an inter partes proceeding before the Trademark Trial and Appeal Board, a party may petition the Director to review an order or decision of the Board that concerns a matter of procedure and does not put an end to the litigation before the Board. See TBMP §§901.02(a), 905.