Petitions to the Director Under 37 C.F.R. §2.146 - In General

37 C.F.R.  Petitions to the Director.

(a) Petition may be taken to the Director in a trademark case:

(1) From any repeated or final formal requirement of the examiner in the ex parte

prosecution of an application if permitted by § 2.63(a) and (b); (2) In any case for

which the Act of 1946, Title 35 of the United States Code, or parts 2, 3, 6, and 7 of

Title 37 of the Code of Federal Regulations specifies that the matter is to be

determined directly or reviewed by the Director; (3) To invoke the supervisory authority

of the Director in appropriate circumstances; (4) In any case not specifically defined

and provided for by parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations;

or (5) In an extraordinary situation, when justice requires and no other party is

injured thereby, to request a suspension or waiver of any requirement of the rules not

being a requirement of the Act of 1946.

(b) Questions of substance arising during the ex parte

prosecution of applications, or expungement or reexamination of registrations,

including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, 16A, 16B,

and 23 of the Act of 1946, are not appropriate subject matter for petitions to the

Director.

(c)(1) Every petition to the Director shall include a statement

of the facts relevant to the petition, the points to be reviewed, the action or relief

requested, and the fee required by § 2.6. Any brief in support of the petition shall be

embodied in or accompany the petition. The petition must be signed by the petitioner,

someone with legal authority to bind the petitioner (e.g., a corporate officer or

general partner of a partnership), or a practitioner qualified to practice under § 11.14

of this chapter, in accordance with the requirements of § 2.193(e)(5). When facts are to

be proved on petition, the petitioner must submit proof in the form of verified

statements signed by someone with firsthand knowledge of the facts to be proved, and any

exhibits.

he petitioner (e.g., a corporate officer or

general partner of a partnership), or a practitioner qualified to practice under § 11.14

of this chapter, in accordance with the requirements of § 2.193(e)(5). When facts are to

be proved on petition, the petitioner must submit proof in the form of verified

statements signed by someone with firsthand knowledge of the facts to be proved, and any

exhibits.

(2) A petition requesting reinstatement of a registration

cancelled in whole or in part for failure to timely respond to an Office action issued

in an expungement and/or reexamination proceeding must include a response to the Office

action, signed in accordance with § 2.193, or an appeal.

(d) Unless a different deadline is specified elsewhere in

this chapter, a petition under this section must be filed by not later than:

(1) Two months after the issue date of the action, or date

of receipt of the filing, from which relief is requested; or

(2) Where the applicant or registrant declares under § 2.20

or 28 U.S.C. 1746 that it did not receive the action, or where no action was issued, the

petition must be filed by not later than:

(i) Two months of actual knowledge of the abandonment

of an application and not later than six months after the date the trademark

electronic records system indicates that the application is abandoned in full or in

part;

(ii) 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, two months after the date of actual

knowledge of the cancellation/expiration of a registration and not later than six

months after the date the trademark electronic records system indicates that the

registration is cancelled/expired;

(iii) Two months after the date of actual knowledge of

the denial of certification of an international application under § 7.13 of this

chapter and not later than six months after the trademark electronic records system

indicates that certification is denied; or

nd not later than six

months after the date the trademark electronic records system indicates that the

registration is cancelled/expired;

(iii) Two months after the date of actual knowledge of

the denial of certification of an international application under § 7.13 of this

chapter and not later than six months after the trademark electronic records system

indicates that certification is denied; or

(iv) Where an expungement or reexamination proceeding

has been instituted under § 2.92, two months after the date of actual knowledge of

the cancellation of goods and/or services in a registration and not later than six

months after the date the trademark electronic record system indicates that the

goods and/or services are cancelled.

(e)(1) A petition from the grant or denial of a request for an

extension of time to file a notice of opposition must be filed by not later than fifteen

days after the issue date of the grant or denial of the request. A petition from the

grant of a request must be served on the attorney or other authorized representative of

the potential opposer, if any, or on the potential opposer.  A petition from the denial

of a request must be served on the attorney or other authorized representative of the

applicant, if any, or on the applicant.  Proof of service of the petition must be made

as provided by § 2.119.  The potential opposer or the applicant, as the case may be, may

file a response by not later than fifteen days after the date of service of the petition

and must serve a copy of the response on the petitioner, with proof of service as

provided by § 2.119.  No further document relating to the petition may be filed.

e applicant.  Proof of service of the petition must be made

as provided by § 2.119.  The potential opposer or the applicant, as the case may be, may

file a response by not later than fifteen days after the date of service of the petition

and must serve a copy of the response on the petitioner, with proof of service as

provided by § 2.119.  No further document relating to the petition may be filed.

(2) A petition from an interlocutory order of the Trademark

Trial and Appeal Board must be filed by not later than thirty days after the issue date

of the order from which relief is requested.  Any brief in response to the petition must

be filed, with any supporting exhibits, by not later than fifteen days after the date of

service of the petition.  Petitions and responses to petitions, and any documents

accompanying a petition or response under this subsection must be served on every

adverse party pursuant to § 2.119.

(f) An oral hearing will not be held on a petition except

when considered necessary by the Director.

(g) The mere filing of a petition to the Director will not

act as a stay in any appeal or inter partes proceeding that is pending before the

Trademark Trial and Appeal Board, nor stay the period for replying to an Office action

in an application, except when a stay is specifically requested and is granted or when

§§ 2.63(a) and (b) and 2.65(a) are applicable to an ex parte application.

(h) Authority to act on petitions, or on any petition, may be

delegated by the Director.

(i) If the Director denies a petition, the petitioner may

request reconsideration, if:

(1) The petitioner files the request by not later than:

action

in an application, except when a stay is specifically requested and is granted or when

§§ 2.63(a) and (b) and 2.65(a) are applicable to an ex parte application.

(h) Authority to act on petitions, or on any petition, may be

delegated by the Director.

(i) If the Director denies a petition, the petitioner may

request reconsideration, if:

(1) The petitioner files the request by not later than:

(i) Two months after the issue date of the decision

denying the petition; or

(ii) Two months after the date of actual knowledge of

the decision denying the petition and not later than six months after the issue date

of the decision where the petitioner declares under § 2.20 or 28 U.S.C. 1746 that it

did not receive the decision; and

(2) The petitioner pays a second petition fee under §

2.6.

Applicants, registrants, and parties to inter partes

proceedings before the Trademark Trial and Appeal Board (Board) who believe they have been

injured by certain adverse actions of the USPTO, or who believe that they cannot comply with

the requirements of the Trademark Rules of Practice (37 C.F.R. Parts 2, 3, 6, and 7) because

of an extraordinary situation, may seek equitable relief by filing a petition to the Director

under

37

C.F.R. §2.146

.

Under

37 C.F.R.

§2.146(a)(1)

, an applicant may file a petition to review an examining

attorney’s formal requirement if permitted by

37 C.F.R.

§2.63(a)

and

(b)

.

Under

37

C.F.R. §2.63(a)(2)

, a petition from a requirement that is repeated but

not made final is permitted if a non-final action contains no substantive refusals and the

subject matter of the requirement is appropriate for petition.  Under

37 C.F.R.

§2.63(b)(2)

, a petition from a final requirement is permitted if a final

action contains no substantive refusals and the subject matter of the requirement is

procedural, and therefore appropriate for petition.  See

TMEP §1704

regarding petitionable subject

matter.  If a petition under

37 C.F.R

tantive refusals and the

subject matter of the requirement is appropriate for petition.  Under

37 C.F.R.

§2.63(b)(2)

, a petition from a final requirement is permitted if a final

action contains no substantive refusals and the subject matter of the requirement is

procedural, and therefore appropriate for petition.  See

TMEP §1704

regarding petitionable subject

matter.  If a petition under

37 C.F.R. §2.146(a)(1)

is denied, the applicant has until

the time remaining in the response period for the Office action that repeated the requirement

or made it final (

see

TMEP

§711

), or thirty days from the date of the decision on the petition,

whichever is later, to comply with the requirement.

37 C.F.R.

§2.63(c)

.

Under

37 C.F.R.

§2.146(a)(2)

, a petition may be filed in any case for which the Trademark

Act, Trademark Rules of Practice, or Title 35 of the United States Code specifies that the

matter is to be determined directly or reviewed by the Director.  This includes petitions to

review the actions of the Post Registration staff under

15 U.S.C.

§§1057

,

1058

,

1059

, and

1141k

.

Under

35 U.S.C.

§2

and

37 C.F.R. §2.146(a)(3)

, the Director may invoke

supervisory authority in appropriate circumstances.

See

TMEP §1707.

Under

37 C.F.R.

§2.146(a)(5)

, a party may petition the Director to suspend or waive any

requirement of the rules that is not a requirement of the statute, in an extraordinary

situation, where justice requires and no other party is injured thereby.

See

TMEP §1708.

See

TMEP

§1703

for a list of issues that often arise on petition, and

TMEP §§1705–1705.09

regarding petition procedure.

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