Petitionable Subject Matter

Ex Parte Examination

Under

37 C.F.R.

§§2.63(a)

and

(b)

, an

applicant may petition the Director to review an examining attorney’s repeated or final

requirement if the subject matter of the requirement is appropriate for petition.  However,

under

37

C.F.R. §2.146(b)

, “[q]uestions 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.”

Procedural issues reviewable on petition include:  whether a

disclaimer was properly printed in standardized format; whether an examining attorney acted

properly in suspending an application; whether an examining attorney acted properly in holding

an application abandoned for failure to file a complete response to an Office action (see

TMEP §1713

); and

whether it was premature for an examining attorney to issue a final action.

Substantive issues that arise in ex parte examination are not

proper subject matter for petition, and may be reviewed only by the Trademark Trial and Appeal

Board on appeal.  See

TMEP

§§1501–1501.07

regarding appeal procedure.  For example, an examining

attorney’s requirement for a special form drawing that agrees with the mark shown on the

specimen(s) of record may not be reviewed on petition, because it requires an analysis of the

commercial impression of the mark.

In re Hart

, 199 USPQ 585, 587 (Comm’r

Pats. 1978).  An examining attorney’s requirement for a disclaimer of a feature of a mark is

also improper subject matter for petition.

Ex parte Fla. Citrus Canners

Coop.

, 37 USPQ 463 (Comm’r Pats. 1938);

Ex parte Kleen-O-Dent Labs.,

Inc.

, 37 USPQ 232 (Comm’r Pats. 1938)

on petition, because it requires an analysis of the

commercial impression of the mark.

In re Hart

, 199 USPQ 585, 587 (Comm’r

Pats. 1978).  An examining attorney’s requirement for a disclaimer of a feature of a mark is

also improper subject matter for petition.

Ex parte Fla. Citrus Canners

Coop.

, 37 USPQ 463 (Comm’r Pats. 1938);

Ex parte Kleen-O-Dent Labs.,

Inc.

, 37 USPQ 232 (Comm’r Pats. 1938).  The question of whether an amendment to a

drawing is a material alteration of the mark is not petitionable, but the question of whether

USPTO practice permits an applicant to correct an allegedly obvious typographical error on a

drawing was found to be reviewable on petition.

In re Tetrafluor Inc.

, 17

USPQ2d 1160 (Comm’r Pats. 1990).  The determination of what is appealable and what is

petitionable is made on a case-by-case basis.

Some issues that arise in ex parte examination may be reviewed

by either petition or appeal.  For example, the question of who is a proper signatory of a

statement of use or other verification of facts on behalf of an applicant may be reviewed by

either petition or appeal.

In re Dermahose Inc.

,

82 USPQ2d 1793, 1795, n.5 (TTAB 2007)

.

A requirement for amendment of an identification of

goods/services may also be reviewed by either petition or appeal.

In re Stenographic

Machs., Inc.

, 199 USPQ 313, 316 (Comm’r Pats. 1978).  On the other hand, a

requirement for amendment of the classification is a procedural matter that may only be

reviewed on petition.

In re Tee-Pak, Inc.

, 164 USPQ 88, 89 (TTAB 1969).

If an applicant files a petition from an examining attorney’s

formal requirement, the applicant subsequently may not appeal the requirement to the Board.

37 C.F.R.

§2.63(c)

.

See

TBMP

§1201.05

for further information about appealable versus

petitionable subject matter in examination.

Post Registration

Trademark Rule 2.146(b) applies only to questions of substance

that arise during ex parte examination of applications for registration

an examining attorney’s

formal requirement, the applicant subsequently may not appeal the requirement to the Board.

37 C.F.R.

§2.63(c)

.

See

TBMP

§1201.05

for further information about appealable versus

petitionable subject matter in examination.

Post Registration

Trademark Rule 2.146(b) applies only to questions of substance

that arise during ex parte examination of applications for registration.  The Director

considers questions of substance, such as whether a proposed amendment materially alters a

registered mark or whether a specimen supports use of a registered mark, when reviewing the

action of the Post Registration staff in connection with a proposed amendment filed under

15 U.S.C.

§1057

(§7 amendment), or an affidavit of use under

15 U.S.C.

§1058

or

§1141k

(§8 affidavit or §71 affidavit).  The decisions of Post Registration staff under

15 U.S.C.

§§1057

,

1058

,

1059

, and

1141k

may not be appealed to the Board.

An owner may petition the Director under Trademark Rule

2.146(a)(3),

37 C.F.R. §2.146(a)(3)

, to request that an affidavit or declaration of

incontestability under §15 of the Trademark Act,

15 U.S.C.

§1065

, be abandoned if the owner determines, after timely filing the

affidavit or declaration, that the affidavit or declaration contained an inaccuracy.

37 C.F.R.

§2.167(j)

;

see

TMEP

§§1605

,

1605.03

,

1707

.

Cancellation of a registration for failure to file an

affidavit or declaration under §8 or §71 of the Trademark Act (

15 U.S.C.

§§1058

,

1141k

), or expiration of a registration for failure to

file a renewal application under §9 (

15 U.S.C. §1059

), does not constitute petitionable

subject matter under the “unintentional delay” standard of

37 C.F.R.

§2.66

.

See

TMEP §1714.01(f)(ii)(D)

.

Furthermore, a petition under

37 C.F.R. §2.146

requesting that the Director accept a

late-filed §8 or §71 affidavit or declaration, or a §9 renewal application, will not be

granted because the Director has no authority to waive the deadline for filing these

documents

t constitute petitionable

subject matter under the “unintentional delay” standard of

37 C.F.R.

§2.66

.

See

TMEP §1714.01(f)(ii)(D)

.

Furthermore, a petition under

37 C.F.R. §2.146

requesting that the Director accept a

late-filed §8 or §71 affidavit or declaration, or a §9 renewal application, will not be

granted because the Director has no authority to waive the deadline for filing these

documents.

See

TMEP

§§1604.04

,

1606.03

,

1613.04

,

1707

. Such petitions will be denied since the Director lacks

authority to grant them.

Inter Partes Proceedings Before Trademark Trial and Appeal Board

In an inter partes proceeding before the Trademark Trial and

Appeal Board, a party may petition the Director to review an interlocutory order of the Board

that concerns a matter of procedure and does not put an end to the litigation before the

Board.

See

TBMP §§901.02(a)

,

905

.

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