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.
A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that a USPTO error caused a registration to be cancelled or expired due to failure to file a §8 affidavit, §71 affidavit, §9 renewal application, or a response to an examining attorney's Office action refusing to accept an affidavit or renewal application. There is no fee for a request for reinstatement under this circumstance. Typically, if the error is due to USPTO mistake, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status at the USPTO. If a registrant does not have the proof of USPTO error that would support a request for reinstatement, but failed to timely respond to an Office action refusing to accept a §8 affidavit, §71 affidavit, or §9 renewal application due to an extraordinary situation, the registrant may file a formal petition under 37 C.F.R. §§2.146(a)(5).
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.