Timeliness

To avoid prejudicing the rights of third parties, petitions

must be filed within a reasonable time after the disputed event.  In many cases, deadlines

for filing petitions are expressly stated in the rules.  The following petition deadlines

run from the issue date of the action or order of which the petitioner seeks review:

Petition to revive an abandoned

application

– by not later than two months after the issue date of the

notice of abandonment or two months after the date of actual knowledge of the

abandonment and not later than six months after the date the trademark electronic

records system indicates that the application is abandoned, where the applicant declares

under

37 C.F.R. §2.20

or

28 U.S.C. §1746

that it did not receive the notice of abandonment

(

37 C.F.R. §2.66(a)

;

see

TMEP §§1705.05

,

1714–1714.01(g)

);

Petition to revive goods/services/classes

deleted for failure to respond to a partial refusal or requirement

– by not

later than two months after the issue date of the examiner’s amendment deleting

(abandoning) the goods/services/classes to which the refusal or requirement pertained or

two months after the date of actual knowledge of the issuance of the examiner’s

amendment deleting (abandoning) the goods/services/classes to which the refusal or

requirement pertained and not later than six months after the date the trademark

electronic records system indicates that the application is abandoned in part by

examiner’s amendment, where the applicant declares under

37 C.F.R. §2.20

or

28 U.S.C. §1746

that it did not receive the examiner’s amendment

(

37 C.F.R

r’s

amendment deleting (abandoning) the goods/services/classes to which the refusal or

requirement pertained and not later than six months after the date the trademark

electronic records system indicates that the application is abandoned in part by

examiner’s amendment, where the applicant declares under

37 C.F.R. §2.20

or

28 U.S.C. §1746

that it did not receive the examiner’s amendment

(

37 C.F.R. §2.66(a)

;

see

TMEP §§718.02(a)

,

1705.05

,

1714–1714.01(g)

);

Petition to reverse an examining attorney’s

holding of abandonment for failure to file a complete response to an Office

action

– by not later than two months after the issue date of the notice of

abandonment or two months after the date of actual knowledge of the abandonment and not

later than six months after the date the trademark electronic records system indicates

that the application is abandoned, where the applicant declares under

37 C.F.R. §2.20

or

28 U.S.C. §1746

that it did not receive the notice of abandonment

(

see

37 C.F.R. §2.146(d)(2)(i)

);

Petition to review an examining attorney’s

formal requirement

– by not later than the end of the response period for

the Office action maintaining the requirement (

15 U.S.C. §1062(b)

;

37 C.F.R. §§2.62

,

2.63(a)

,

(b)

) (

see

TMEP §711

regarding the deadline for response to an Office

action and

§711.01

regarding requests for an extension of

time to respond to an Office action with a three-month response period);

Petition to reinstate a registration and accept

a late response to an Office action issued in connection with a timely filed 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

– by not later than two months after the issue

date of the cancellation notice or two months of actual knowledge of the cancellation

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

indicates that the registration is cancelled/expired (

see

37 C.F.R

of use or excusable non-use under Section 8 or 71 of the Act, or a renewal application

under Section 9 of the Act

– by not later than two months after the issue

date of the cancellation notice or two months of actual knowledge of the cancellation

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

indicates that the registration is cancelled/expired (

see

37 C.F.R. §2.146(d)

;

see

TMEP §1712.02(b)

);

Petition to review a Section 8 or 71

rejection

– by not later than six months after the issue date of the Office

action maintaining a refusal of the affidavit (

37 C.F.R. §2.165(b)

;

see

TMEP §§1604.18–1604.18(a)

,

1613.18–1613.18(a)

);

Petition to review a Section 7

rejection

– by not later than six months after the issue date of the Office

action refusing to enter an amendment or correction (

37 C.F.R. §2.176

);

Petition to review the denial of a request for

an extension of time to file a notice of opposition

– by not later than 15

days after the issue date of the grant or denial of the request (

37 C.F.R. §2.146(e)(1)

);

Petition to review an interlocutory order of

the Trademark Trial and Appeal Board

– by not later than 30 days after the

issue date of the order from which relief is requested (

37 C.F.R. §2.146(e)(2)

);

Petition to review the denial of certain timely

filed paper submissions with statutory deadlines

– by not later than two

months after the issue date of the notice denying acceptance of the paper filing

(

37 C.F.R. §2.147(b)(2)

);

Request for reconsideration of decision on

petition

– by not later than two months after the issue date of the decision

denying the petition or 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 applicant declares under

37 C.F.R. §2.20

or

28 U.S.C. §1746

that it did not receive the decision

(

37 C.F.R

reconsideration of decision on

petition

– by not later than two months after the issue date of the decision

denying the petition or 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 applicant declares under

37 C.F.R. §2.20

or

28 U.S.C. §1746

that it did not receive the decision

(

37 C.F.R.

§§2.66(e)(1)

,

2.146(i)(1)

);

Petition to review the denial of certification

of an international application

– by not later than two months after the

date of actual knowledge of the denial of certification of an international application

under

§7.13(b)

and not

later than six months after the trademark electronic records system indicates that

certification is denied where the applicant or registrant declares under

37 C.F.R. §2.20

or

28 U.S.C. §1746

that it did not receive the action, or no action was

issued (

37 C.F.R. §2.146(d)(2)(iii)

).

If the rules do not provide an express deadline, the petition

must be filed by not later than two months after the issue date of the action from which

relief is requested.

37 C.F.R.

§2.146(d)(1)

.

The time limits set forth in the rules are strictly enforced.

Petitions filed after the expiration of the deadlines are denied as untimely.  If the

petitioner can show that extraordinary circumstances caused the delay in filing the

petition, the petitioner may request waiver of these time limits, pursuant to

37 C.F.R.

§2.146(a)(5)

and

§2.148

.

See

TMEP §1708

regarding waiver of rules.

On the rare occasions when filing on paper is permitted,

petitions mailed to the USPTO by the due date in accordance with

37 C.F.R.

§2.197

or

§2.198

will be considered timely.

See

37 C.F.R.

§2.195(b)(1)-(2)

. See

TMEP

§§301.02-301.02(e)

regarding the limited exceptions for paper

submissions,

§§305.02-305.02(h)

regarding certificate of mailing procedures,

and

§§305.03-305.03(e)

regarding Priority Mail Express®

procedures

hen filing on paper is permitted,

petitions mailed to the USPTO by the due date in accordance with

37 C.F.R.

§2.197

or

§2.198

will be considered timely.

See

37 C.F.R.

§2.195(b)(1)-(2)

. See

TMEP

§§301.02-301.02(e)

regarding the limited exceptions for paper

submissions,

§§305.02-305.02(h)

regarding certificate of mailing procedures,

and

§§305.03-305.03(e)

regarding Priority Mail Express®

procedures.

See

TMEP

§1705.05

regarding the duty to exercise due diligence in monitoring

the status of pending trademark matters.