New Trademark Rules Impacting Petitions to Revive and Requests to Reinstate
The USPTO amended certain rules for reviving trademark applications and reinstating trademark registrations last August 2017. These amendments were incorporated into the October 2017 revision to the Trademark Manual of Examining Procedure ("TMEP"). The prior set of rules (see TMEP §1714) led to situations where there was uncertainty in determining when an applicant had actual knowledge of the abandonment of an application or expiration/cancellation of a trademark registration. For more details on reviving trademark applications, see our webpage entitled, Is It Possible To Revive An Abandoned Application?
Keep in mind that petitions to revive are for abandoned trademark applications, and require fees when filing the petition. This means that the applicant unintentionally failed to respond to an office action or failed to submit a statement of use or a request for time to file a statement of use in response to a notice of allowance. In the alternative, if you believe the trademark application was abandoned due to USPTO error, not applicant error, then a request for reinstatement should be made (where no filing fee is required).
The new rules aim to provide clarity and remove the uncertainty of attempting to determine if the petition to revive or request to reinstate will be viewed as timely. In addition, the USPTO will no longer have to struggle to determine if an applicant was diligently monitoring its trademark application. The rules now state that an applicant may make a petition to revive if (1) the notice of abandonment was received, and the petition to revive is made no later than two months after the issue date of the notice of abandonment or (2) if the applicant did not receive the notice of abandonment, but had actual knowledge of the abandonment, the petition to revive can be filed if not later than six months after the date the trademark electronic system indicates that the application is abandoned in full or in part.
This same time frame would apply for a request for reinstatement of an abandoned trademark. If requesting reinstatement of an expired or cancelled trademark registration, then you must meet the first prong or second prong above. Registrant would be eligible to file a request for reinstatement, if the notice of cancellation or expiration was received and the request was made not later than two months after the issue date of the notice of cancellation or expiration or where the registrant has timely filed an affidavit of use or excusable non-use under section 8 or 71 of the Act, or a renewal application under section 9 of the Act, then no later than two months after the date of actual knowledge of the expiration or cancellation, and not later than six months after the date the USPTO's database indicates that the registration is cancelled or expired where the registrant declares that it did not receive notification of cancellation or expiration or where the Office did not issue such notification.
The amended rule now clearly indicates that petitions and requests for reinstatement must be filed no later than six months after the date the USPTO's database indicates that the trademark application is abandoned or the trademark registration is cancelled or expired. In order to take advantage of the benefit of the new rule, applicants and registrants must monitor its respective application or registration every six months. If an applicant or registrant is seeking relief outside the six-month period after the USPTO's database is updated, they may file a petition to the Director under Trademark Rule 2.146(a)(5), and request a waiver of the relevant rule, but the petition must be based on extraordinary circumstances.
Based on the type of petition an applicant is submitting, different requirements will apply. It is important to check the rules pertaining to which documents must be submitted prior to filing, to determine if a fee is required, and lastly to review the rules regarding time periods for filing which will vary based on whether you received notice of the abandoned application or cancelled/expired registration. If you have questions concerning this topic, or inquiries pertaining to another trademark related topic, please feel free to contact our office for a courtesy consultation.