Waiver of Rules

Under

37 C.F.R.

§2.146(a)(5)

and

§2.148

,

the Director may waive any provision of the rules that is not a provision of the statute,

when:  (1) an extraordinary situation exists; (2) justice requires; and (3) no other party is

injured.

All three of the above conditions must be satisfied before a

waiver will be granted, and the burden is on the petitioner to show that the situation is

extraordinary.  Disasters like fires, hurricanes, and snowstorms are considered to be

extraordinary situations.

On the other hand, oversights and inadvertent errors that could

have been avoided with the exercise of reasonable care are not considered to be extraordinary

situations.

In re Universal Card Grp., Inc.

, 25 USPQ2d 1157, 1158 (Comm’r

Pats. 1992) (finding that a docketing error not extraordinary situation);

In re Merck

& Co.

, 24 USPQ2d 1317, 1318 (Comm’r Pats. 1992) (holding that inadvertent

misidentification of serial number in request for extension of time to oppose not

extraordinary situation);

In re Tetrafluor Inc.

, 17 USPQ2d 1160, 1162

(Comm’r Pats. 1990) (finding that a typographical error not extraordinary situation).

A change of attorneys is not considered to be an extraordinary

situation,

In re Unistar Radio Networks, Inc.

, 30 USPQ2d 1390, 1392 (Comm’r

Pats. 1993), nor is a misunderstanding or lack of awareness of the requirements of the

Trademark Rules of Practice considered extraordinary.

In re Buckhead Mktg. &

Distribution, Inc.

, 71 USPQ2d 1620, 1622–23 (Dir USPTO 2004) (holding that an

applicant’s lack of knowledge of application filing fee increase not extraordinary situation);

B & E Sales Co. v. Andrew Jergens Co.

, 7 USPQ2d 1906, 1907–08 (Comm’r

Pats. 1988);

Gustafson v. Strange

, 227 USPQ 174 (Comm’r Pats. 1985).

Errors by attorneys are imputed to the client and the client is bound by the consequences.

In re Sotheby’s Inc.

, 18 USPQ2d 1969, 1970 (Comm’r Pats. 1989).

A party will not be excused from compliance with the rules

because the results in a particular case may be harsh

s Co. v. Andrew Jergens Co.

, 7 USPQ2d 1906, 1907–08 (Comm’r

Pats. 1988);

Gustafson v. Strange

, 227 USPQ 174 (Comm’r Pats. 1985).

Errors by attorneys are imputed to the client and the client is bound by the consequences.

In re Sotheby’s Inc.

, 18 USPQ2d 1969, 1970 (Comm’r Pats. 1989).

A party will not be excused from compliance with the rules

because the results in a particular case may be harsh.

See Buckhead

, 71

USPQ2d at 1623 (rejecting petitioner’s argument that “justice requires” waiver of the filing

date requirements of

37 C.F.R. §2.21

to prevent the loss of priority relative

to a conflicting application).

The Director has no authority to waive or suspend the

requirement of a rule that is also a requirement of the statute, such as the deadline for

filing an affidavit or declaration under §8 or §71 (

15 U.S.C.

§§1058

,

1141k

), or a renewal application under §9 (15 U.S.C.

§1059).

See Checkers Drive-In Rest., Inc. v. Comm’r of Patents &

Trademarks,

51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. Cir. 1995),

cert. denied

, 516 U.S. 866 (1995) ("[I]n establishing cancellation as the

penalty for failure to file the required affidavit, Congress made no exception for the

innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel

Checkers's service mark registration in this case.”);

In re Holland Am. Wafer

Co.

, 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) (“Timeliness set by

statute is not a minor technical defect which can be waived by the Commissioner.”). Therefore,

a petition that requests a waiver of a statutory requirement will be denied, as the Director

lacks authority to grant such a petition.

See

,

e.g.

,

In re Precious Diamonds, Inc.

, 635 F.2d 845, 847 (C.C.P.A. 1980).