TMEP 1706: Standard of Review on Petition

October 2017 Edition of the TMEP

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1706    Standard of Review on Petition

The standard of review on petition depends on the particular section of the rules under which the petition is filed.

In review of an examining attorney’s formal requirement under 37 C.F.R. §§2.63(a) and (b) and 2.146(a)(1), the standard of review is whether the examining attorney’s judgment was correct, the same standard that the Trademark Trial and Appeal Board would use if it were considering the requirement on appeal. In re Du Pont Merck Pharm. Co., 34 USPQ2d 1778, 1781 (Comm’r Pats. 1995); In re Stenographic Machs., Inc., 199 USPQ 313, 316 (Comm’r Pats. 1978).  However, in review of an examining attorney’s action under 37 C.F.R. §2.146(a)(3), the Director will reverse the examining attorney only where there has been clear error or an abuse of discretion. In re GTE Educ. Servs., 34 USPQ2d 1478, 1479–1480 (Comm’r Pats. 1994); In re Direct Access Commc'ns (M.C.G.) Inc., 30 USPQ2d 1393, 1394 (Comm’r Pats. 1993).  See 37 C.F.R. §2.146(b) and TMEP §1704 regarding petitionable subject matter.

The Director reviews the actions of the Post Registration staff on §8 affidavits, §71 affidavits, §9 renewal applications, and §7 amendments, to determine whether the judgment of the examiner was correct. See In re Umax Data Sys., Inc., 40 USPQ2d 1539, 1541 (Comm’r Pats. 1996) (announcing change in standard of review of petitions to review Post Registration decisions on §7 amendments).

The Director will reverse an action of the Board on petition under 37 C.F.R. §2.146(a)(3) only for clear error or abuse of discretion. Riko Enterprises, Inc. v. Lindsley, 198 USPQ 480, 482 (Comm’r Pats. 1977).

The Director reviews the denial of an application filing date to determine whether the denial was correct. See TMEP §204.02.