For the latest information on this topic and to review the rule changes of 2017, please see the firm page entitled, New Rules Impacting Petitions to Revive and Requests to Reinstate. If a trademark applicant unintentionally fails to respond to an Office Action or to a Notice of Allowance, there is a mechanism in place for that applicant to revive the trademark application. If this occurs a petition to revive the application must be filed with the United States Patent & Trademark Office ("USPTO"). It must be filed within two months of the date of the Notice of Abandonment or if notice of abandonment was not received, no later than six months after the date the USPTO's electronic record system indicates that the application is abandoned. Petitions filed are handled by the paralegals in the Office of the Deputy Commissioner for trademark examination policy.
There are certain procedural requirements that must be met when filing a petition to revive. The procedural requirements are found in 37 C.F.R. §2.66 and in the Trademark Manual of Examining Procedure ("TMEP") §1714 - §1714.01(g). If there are deficiencies, the applicant will be notified that the petition did not meet the requirements under the rule, and the applicant will have thirty days to correct any deficiencies. If the applicant failed to reply to an Office Action the following requirements must be met: (1) a statement signed by a person with first hand knowledge of the facts and it must be asserted that the delay was unintentional (the statement does not have to be verified); (2) the petition fee must be submitted; and (3) the response to the Office Action will have to be submitted, unless the petitioner asserts that it did not receive the Office Action, in that case a new response period will be provided.
If there was a failure to file a statement of use or request for an extension, then the petitioner must submit: (1) a statement signed by a person with first hand knowledge of the facts and it must be asserted that the delay was unintentional; (2) the fee for filing the petition; (3) either a statement of use or an extension request for time to file the statement of use; (4) a statement of use filing fee if a statement of use is being filed with the petition; and (5) if applicable the fee or fees for the extension request(s) missed and a current fee if one is currently being filed with the petition. The filing fees can add up quickly because filing a petition to revive does not stay the filing deadlines for filing a future statement of use or additional extension requests. For example, the USPTO will not grant a petition, if the petitioner is the applicant of an intent-to-use trademark application and the granting of the petition will in turn extend the thirty-six month period to file the statement of use.
Generally, the USPTO will not challenge a petitioner's assertion that the delay was unintentional, unless the record contains evidence that the delay was in fact intentional. The unintentional delay standard will not apply if the applicant submits an incomplete response to an Office Action. If an incomplete response is received then the Examiner can either extend the applicant's time to respond, if the incomplete response was inadvertent or abandon the application for failure to submit a complete response. In the latter case, the applicant would have the option to file a petition for review with the Director. The standard of review in that case would be reversal should there be clear procedural error.
The rules governing petitions to revive abandoned trademark applications found in Trademark Rule 2.66 apply only to Office Actions for pending applications and not to Office Actions for post registration filings. For example, if a registrant fails to respond to an Office Action in connection with a Section 8 Affidavit or a Section 9 Renewal Application, a petition to revive is not available. Instead the registrant would have to file a petition to the Director and the Director will only grant petitions in extraordinary circumstances. If you have a question concerning a failure to reply to an Office Action or an inquiry pertaining to a Notice of Allowance, please feel free to contact our office for a courtesy consultation.