1711 Review of Denial of Filing Dates
If an application is denied a filing date and the applicant wants the filing date restored, the usual procedure is to file a petition under 37 C.F.R. §2.146.
However, in the limited circumstances listed below, the applicant may request restoration of the filing date without a formal petition:
- (1) The USPTO has no record of receipt of the application, but the applicant presents proof that a complete application was filed through the Trademark Electronic Application System (“TEAS”), in the form of a copy of a TEAS “Success” page confirming receipt of the application (see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
- (2) The USPTO has no record of receipt of the application, but the applicant presents proof of actual receipt in the form of evidence that a USPTO employee signed for or acknowledged the envelope containing the application (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
- (3) A filing date was denied, but the application itself clearly shows on its face that the applicant met all relevant filing date requirements on the filing date being requested. If the application was filed on paper, the applicant must resubmit any returned documents showing the cancelled filing date.
- (4) A filing date was denied to a paper application due to the omission of an element, such as a drawing, but the element was in fact included in the application as originally submitted, and the applicant submits all of the following: (a) a return postcard indicating that the USPTO specifically acknowledged receipt of the element in question (see TMEP §303.02(c)); (b) a substitute to replace the lost element; (c) the application documents that were returned; and (d) a copy of the Notice of Incomplete Trademark Application.
- (5) Applicant provides evidence that applicant attempted to file the application through TEAS, but TEAS was unavailable due to technical problems (e.g., a computer screen printout showing receipt of a “Fatal Error - Access Denied” error message, or a copy of an e-mail message from the TEAS Help Desk stating that the TEAS application forms were temporarily unavailable). See In re Henkel Loctite Corp., 69 USPQ2d 1638 (Dir USPTO 2003).
In the above situations, a staff attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy may restore the original filing date without a formal petition or a petition fee. In all other circumstances, the applicant must file a formal petition, including the petition fee required by 37 C.F.R. §2.6.
Procedure for Filing Request. In any request to restore an application filing date, the applicant should first refile the application, with the application filing fee required by 37 C.F.R. §2.6(a)(1)(i), (ii), or (iii), as appropriate. The USPTO prefers that the application be filed electronically via TEAS at http://www.uspto.gov. The application filing fee must be included even if the applicant has not yet received a refund of the fee previously paid.
After the applicant receives a new serial number, the applicant should submit a request to restore the original filing date. To ensure proper routing and processing, the Office prefers that the request also be filed electronically. In TEAS, the Request to Restore Filing Date form can be accessed by clicking on the link entitled “Petition Forms” at http://www.uspto.gov. Alternatively, the request should be faxed to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950. The request should: (1) include the new serial number; (2) state the reason(s) why the applicant believes the filing date was denied in error; and (3) include a copy of any Notice of Incomplete Trademark Application received from the USPTO. See TMEP §204.02.
Time for Filing Request. All requests to restore filing dates, whether made by formal petition or informal request, must be filed promptly. If the USPTO issues a notice advising the applicant of the denial or cancellation of the filing date, the request to restore the filing date must be filed within two months of the issuance date of the action, or it will be dismissed as untimely. 37 C.F.R. §2.146(d). Although applicants have two months from the issuance date of this notice to file a request to restore the original filing date, it is recommended that an applicant promptly refile the application, and file the request to restore the filing date immediately upon receipt of the new serial number, to minimize the delay in receiving a filing date, and to reduce the impact on third parties who may rely on the current filing date information in the Trademark database.
Furthermore, applicants must exercise due diligence in monitoring the status of applications. 37 C.F.R. §2.146(i); TMEP §1705.05. To be considered diligent, an applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. §2.146(i)(1).
Evidence of Missing Element Required. If the USPTO denies a filing date due to the omission of an element required by 37 C.F.R. §2.21, and the applicant declares that the missing element was in fact included with the application as filed, the Director will not grant a petition to restore or reinstate the filing date unless: (1) the applicant provides evidence that the element was received in the USPTO on the requested filing date; or (2) there is an image of the element in the USPTO’s Trademark Image Capture and Retrieval System (“TICRS”) database.
The USPTO scans images of applications almost immediately after they are received in the USPTO and uploads these scanned images into TICRS. Because very little time passes between receipt of the application and creation of the scanned image, it is highly likely that the TICRS file of an application will be an exact copy of what was received in the USPTO. Accordingly, if TICRS does not include an image of a missing element that a petitioner declares was submitted with the application, the Director will not grant the petition unless there is evidence to corroborate the petitioner’s declaration. An example of corroborating evidence is a postcard submitted with the original application that bears: (1) a USPTO date stamp; and (2) an itemized list of materials submitted that includes the missing element. In re Group Falck A/S, 62 USPQ2d 1797, 1798 (Dir USPTO 2002).