TMEP 1714.01(f)(i): Situations Where the Unintentional Delay Standard Applies

This is the October 2015 Edition of the TMEP

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1714.01(f)(i)    Situations Where the Unintentional Delay Standard Applies

The unintentional delay standard of Trademark Rule 2.66 applies only to the “failure” to respond to an examining attorney’s Office action or a notice of allowance. See 15 U.S.C. §§1051(d)(4), 1062(b). This includes the failure to meet minimum filing requirements for a statement of use or request for an extension of time to file a statement of use.

The minimum filing requirements for a statement of use are listed in 37 C.F.R. §2.88(c): (1) the fee for at least a single class; (2) at least one specimen or facsimile of the mark as used in commerce; and (3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant stating that the mark is in use in commerce.

For a trademark or service mark, the minimum filing requirements for a request for extension of time to file a statement of use are: (1) a verified statement, signed by the applicant or a person properly authorized to sign on behalf of the applicant, that the applicant has a continued bona fide intention to use the mark in commerce; (2) an identification of the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. In re El Taurino Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996); TMEP §1108.04. See TMEP §1108.04 for the minimum filing requirements for an extension request for a collective mark or certification mark.

An applicant who fails to meet the minimum filing requirements for a statement of use or request for an extension of time to file a statement of use has, in effect, not filed the statement of use or extension request. Therefore, if the failure to meet the minimum filing requirements was unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66.

An applicant may also file a petition to revive under 37 C.F.R. §2.66 if the applicant timely files a notice of appeal from an examining attorney’s final refusal, but unintentionally fails to include the appeal fee required by 15 U.S.C. §1070.