1714.01(f)(ii)(D) Registered Marks
Trademark Rule 2.66 applies only to abandoned applications, not to registered marks. If a registrant fails to timely respond to an Office action regarding a §8 affidavit, §71 affidavit, or §9 renewal application, even if the electronic record does not indicate the registration is cancelled or expired, the registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(5) and 2.148 to waive a rule and accept a late response. The petition must be filed by not later than two months after the issue date of the notice of cancellation/expiration. 37 C.F.R §2.146(d)(1). Where the registrant declares under 37 C.F.R §2.20 or 28 U.S.C. §1746 that it did not receive the action, the petition must be filed by not later than two months of actual knowledge of the cancellation/expiration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired. 37 C.F.R §2.146(d)(2)(ii).
The Director will waive a rule only in an extraordinary situation, where justice requires, and no other party is injured. The Director has no authority to waive a statutory requirement. See TMEP §1708 regarding the waiver of rules. Failure to receive the post registration Office action may be considered an extraordinary situation.
See TMEP §§1712.02–1712.02(b) regarding requests to reinstate cancelled or expired registrations.