Specific Types of Petitions

A variety of issues may be reviewed on petition.  The following

is a list of issues that commonly arise:

Petitions to Restore an Application Filing Date

.   See

TMEP §1711.

Petitions to Accept Paper Submissions

in

trademark matters are reviewed under

37 C.F.R.

§§2.146(a)(5)

,

2.147

,

2.148

.

See

TMEP

§1709

. Petitions to accept paper submissions in Trademark Trial and

Appeal Board (Board) proceedings due to an outage of the Board's electronic filing system

are reviewed under

37 C.F.R. §§2.146(a)(5)

,

2.147(b)(1)(vi)

,

2.147(d)

,

2.148

.

Petitions to Make Special

.

See

TMEP §1710.

Petitions to Reverse an Examining Attorney’s Holding of Abandonment for Failure to

File a Complete Response to an Office Action

are reviewed under

37 C.F.R.

§2.146(a)(3)

.

See

TMEP §1713.

Petitions to Revive an Application Abandoned Due to Unintentional Delay in

Responding to an Office Action or Notice of Allowance

are reviewed under

37 C.F.R.

§2.66

.

See

TMEP

§§1714–1714.01(g)

.

Petitions to Restore Jurisdiction to the Examining Attorney

may be filed

by the applicant under

37 C.F.R. §2.84

, when the examining attorney does not

have jurisdiction to review an amendment to the application.

See

TMEP

§§1504–1504.05

.

Petitions to Review the Action of an Examining Attorney

.  A petition to

review an examining attorney’s formal requirement may be filed under

37 C.F.R.

§2.63(a)

and

(b)

and

§2.146(a)(1)

, if the requirement is repeated or made

final and the subject matter is procedural in nature and therefore appropriate for petition.

See

TMEP §1704

regarding petitionable subject matter and

TMEP

§1706

regarding the standard of review.

Petitions to Review the Requirement for a

Qualified U.S. Attorney and/or for Information or Declarations Related to Such

Requirement

under

37 C.F.R. §2.11(f)

. If the USPTO issues an Office

action that (1) maintains only a requirement for U.S. counsel and/or additional information

under Rule 2.11 (a), (b), and/or (c), or (2) maintains only the requirement for the

insufficient information fee under

37 C.F.R

to Review the Requirement for a

Qualified U.S. Attorney and/or for Information or Declarations Related to Such

Requirement

under

37 C.F.R. §2.11(f)

. If the USPTO issues an Office

action that (1) maintains only a requirement for U.S. counsel and/or additional information

under Rule 2.11 (a), (b), and/or (c), or (2) maintains only the requirement for the

insufficient information fee under

37 C.F.R. §2.22(b)

in addition to one or all of those

requirements, an applicant’s or registrant’s recourse for seeking review is limited to a

petition to the Director under Rule 2.146.

37 C.F.R. §§2.11(f)

,

2.146

,

2.165

,

2.186

,

7.40

.

Petitions to Reinstate a Cancelled Registration and

Accept a Late Response to an Office Action Issued in Connection with a Section 8 or 71

declaration of use or excusable nonuse

are reviewed under

37 C.F.R. §2.146(a)(5)

and

§2.148

. See

TMEP

§§1604.16

,

1606.12

,

1613.16

,

1708

,

1712.02(b)

.

Petitions to Reinstate a Cancelled Registration

and Accept a Late Response to an Office action Issued in Connection with an Expungement or

Reexamination Proceeding Under Section 16a or 16b

are reviewed under

37 C.F.R. §2.146(a)(5)

and

§2.148

. See

TMEP §1716.04(f)

.

Petitions to Review the Action of the Post Registration Staff

may be

filed if an affidavit of use or excusable nonuse is refused under

15 U.S.C.

§1058

or

§1141k

, a renewal application is refused under

15 U.S.C.

§1059

, or a proposed amendment or correction is refused under

15

U.S.C. §1057

.

See

37 C.F.R §§2.146(a)(2)

,

2.165

,

2.176

,

2.186

;

TMEP §§1604.18

,

1606.14

,

1613.18

.

Petitions to Review the Refusal of the Madrid Processing Unit to Certify an

Application for International Registration

are reviewed under

37 C.F.R.

§2.146(a)(3)

.

See

TMEP

§1902.03(a)

.

Petitions to the Director Regarding an

International Application or Registration

are reviewed under

37 C.F.R. §2.146(a)(3)

.

Petitions to Reverse a Nonfinal Interlocutory Order of the Trademark Trial and

Appeal Board

(

37 C.F.R

Review the Refusal of the Madrid Processing Unit to Certify an

Application for International Registration

are reviewed under

37 C.F.R.

§2.146(a)(3)

.

See

TMEP

§1902.03(a)

.

Petitions to the Director Regarding an

International Application or Registration

are reviewed under

37 C.F.R. §2.146(a)(3)

.

Petitions to Reverse a Nonfinal Interlocutory Order of the Trademark Trial and

Appeal Board

(

37 C.F.R. §2.146(e)(2)

) are reviewed under the standard

of clear error or abuse of discretion, if the subject matter is procedural in nature and

therefore appropriate for consideration on petition.

Riko Enters., Inc. v.

Lindsley

, 198 USPQ 480 (Comm’r Pats. 1977);

see

Trademark

Trial and Appeal Board Manual of Procedure (TBMP)

§§901.02(a)

,

905

.

Petitions to Review a Decision to Deny or Grant a Request for an Extension of Time

to Oppose

(

37 C.F.R. §2.146(e)(1)

) are reviewed to determine

whether the Board correctly applied

37 C.F.R.

§2.101

and

§2.102

.

Petitions to Add or Substitute a Basis After Publication

are reviewed

under

37

C.F.R. §2.146(a)(2)

.

See

37 C.F.R.

§2.35(b)(2)

;

TMEP §§806.03(j)-806.03(j)(iii)

.

Petitions to Abandon an Affidavit or Declaration of Incontestability

Under §15 of the Trademark Act,

15 U.S.C.

§1065

, are reviewed under

37 C.F.R.

§2.146(a)(3)

.

See

37 C.F.R.

§2.167(j)

;

TMEP §§1605

,

1605.03

,

1704

,

1707

.

See

TMEP §1607

and

TBMP

§§303

,

307

,

308

, and

309

regarding petitions to cancel registrations under

15 U.S.C.

§1064

, which are handled by the Board.

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