TMEP 716.02(e): Pending Cancellation or Expiration of Cited Registration

This is the October 2015 Edition of the TMEP

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716.02(e)    Pending Cancellation or Expiration of Cited Registration

When the owner of a registration submits a timely affidavit or declaration of continued use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavit”) or §1141k (“§71 affidavit”) or an application for renewal under 15 U.S.C. §1059, the USPTO’s automated records are updated to indicate receipt of the document and the action taken on the document. The USPTO’s automated records are updated 30 days after the grace period expires to indicate that a registration is cancelled or expired if:

  • (1) No §8 or §71 affidavit has been filed before the end of the six-month grace period following the sixth year after the date of registration (or publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for §8 affidavits);
  • (2) No §8 or §71 affidavit has been filed before the end of the six-month grace period following the end of any ten-year period after the date of registration; or
  • (3) No §9 renewal application has been filed before the end of the six-month grace period following the expiration of the previous term of registration.

See TMEP §§1602–1602.04 regarding the duration of a registration, TMEP §1604.04 regarding the due dates for §8 affidavits, TMEP §1606.03 regarding the due dates for §9 renewal applications, and TMEP §1613.04 regarding the due dates for §71 affidavits.

To avoid inadvertent cancellation or expiration of a registration due to a delay in entering a timely filed affidavit or renewal application into the records of the USPTO, the USPTO waits until 30 days after the expiration of the grace period for filing the §8 or §71 affidavit or §9 renewal application before updating its records to show that the registration is cancelled or expired.

The examining attorney must confirm the status of the cited registration to ensure that it is still active before issuing any refusal of registration under Trademark Act §2(d) or filing a brief on appeal of a §2(d) refusal.

If the examining attorney is ready to issue a nonfinal refusal of registration under §2(d), and the Trademark database shows that the registration is still active, the examining attorney must issue the refusal even if the grace period for filing a §8 or §71 affidavit or §9 renewal application for the cited registration has passed and the Trademark database does not indicate that the owner has filed a §8 or §71 affidavit or §9 renewal application. The examining attorney must not suspend the application, but must advise the applicant that the grace period for filing the §8 or §71 affidavit or §9 renewal application has passed and that it appears that the registration may be subject to cancellation under §8 or §71 and/or expiration under §9.

If the examining attorney is ready to issue a final refusal of registration under §2(d), and the cited registration is in the grace period for filing a §8 or §71 affidavit or §9 renewal application, the examining attorney must suspend action pending a determination of whether the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or whether the registration is renewed. If the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or the cited registration is renewed, the examining attorney will remove the application from suspension and issue the final refusal.

Similarly, if the examining attorney is ready to issue a denial of a request for reconsideration of a final refusal of registration under §2(d), and the cited registration is in the grace period for filing a §8 or §71 affidavit or §9 renewal application, the examining attorney must suspend action. If the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or the cited registration is renewed, the examining attorney will remove the application from suspension and issue an Examiner’s Subsequent Final Refusal, thereby giving the applicant six months in which to file an appeal.

If the grace period for filing a §8 or §71 affidavit or §9 renewal application for the cited registration has passed, and the examining attorney is ready to issue a final refusal of registration under §2(d), or a denial of a request for reconsideration of a final refusal of registration under §2(d), the examining attorney must not issue the action until the USPTO’s automated records indicate that the owner has filed the §8 or §71 affidavit or §9 renewal application, and the USPTO has accepted the §8 or §71 affidavit or granted renewal. Instead, the examining attorney must suspend action for six months pending final disposition of the cited registration.

If the grace period for filing a §8 or §71 affidavit or §9 renewal application for the cited registration has passed, and the examining attorney is ready to write an appeal brief, the examining attorney must request a remand so that the application can be suspended pending final disposition of the cited registration. The Board will issue an order suspending the appeal and remanding the case to the examining attorney. If the cited registration is cancelled or expires, the examining attorney must withdraw the §2(d) refusal and notify the applicant that it has been withdrawn. If an appropriate affidavit or renewal application is filed for the cited registration, the examining attorney must notify the Board; the Board will resume proceedings and reset the time for filing the examining attorney’s appeal brief. Similarly, if the cited registration is cancelled or expires, but the §2(d) refusal is only one of the issues on appeal, the examining attorney must notify the Board of the status of the cited registration. The Board will resume proceedings and reset the time for filing a brief. See TBMP §1213 regarding the suspension of an ex parte appeal pending cancellation of the cited registration under §8, §9, or §71 of the Act.

The examining attorney cannot withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired. If the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration has been cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired.

See TMEP §1611 for information about how the owner of a registration who has not timely filed a §8 or §71 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.