Petitions

Petitions

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The following forms are available for trademark petitions. ^[1]Some of the material for this section is taken from the USPTO, “Petition forms,” available at https://www.uspto.gov/trademarks-application-process/filing-online/petition-forms. No copyright is … Continue reading  

1. Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action

Preview Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action [PDF] prior to accessing the electronic version through the numbered link, above. Do not attempt to file the PDF version because it is for viewing purposes only and not the entrance of any information.

The United States Patent and Trademark Office (USPTO) “abandons” a trademark application when we don’t receive a response to an examining attorney’s office action by the deadline provided. You may use this form to return the application to a live status if we issued an office action and you unintentionally missed the deadline to respond to the office action. To view the status of your application or to review the office action, use the Trademark Status and Document Retrieval (TSDR) database.

Timeliness

You must file your application by these deadlines:

• If your application has not been abandoned in TSDR, you may file the petition now.
• If you received a Notice of Abandonment, you must file the petition no later than two months from the issue date of that notice.
• If you did not receive a Notice of Abandonment, you must file the petition no later than two months from the date you learned of the abandonment and no more than six months from the date TSDR shows the application was abandoned. 

Partial abandonment

If your application was partially abandoned for failure to respond to a partial refusal, you may not be able to use this form because of the status of your application. If you can’t use this form, please use the Petition to Director Under Trademark Rule 2.146 form to request revival and submit your response to the partial refusal. You must file the petition within two months of the issue date of the examiner’s amendment notifying you of the partial abandonment. To view the status of your application or to view the examiner’s amendment, go to TSDR.

2. Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request

The United States Patent and Trademark Office (USPTO) “abandons” a trademark application when we don’t receive a statement of use or a request for extension of time to file a statement of use by the deadline provided. You may use this form to return the application to a live status if a Notice of Allowance has been issued and you unintentionally missed the deadline to file a statement of use or a request for extension of time to file a statement of use. 

Timeliness

You must file your application by these deadlines:

• If your application has not been abandoned in Trademark Status and Document Retrieval (TSDR), you may file the petition now.
• If you received a Notice of Abandonment, you must file the petition no later than two months from the issue date of that notice.
• If you did not receive a Notice of Abandonment, you must file the petition no later than two months from the date you learned of the abandonment and no more than six months from the date TSDR shows the application was abandoned. 

3. Petition to the Director Under Trademark Rule 2.146

Use this form to file a petition to the director specifically under Trademark Rule 2.146 or to request revival of a portion of an application that was partially abandoned. The petition must include a statement of the relevant facts, any relevant evidence, and the required fee ($100). When facts are to be proved, you must submit proof using an affidavit or declaration under Trademark Rule 2.20.

NOTE: If you are using this form to request revival of a portion of the application that was partially abandoned, please notify the Petitions Office at 571-272-8950 that you filed a request to revive a partially abandoned application and indicate the application serial number.

NOTE: This form may also be used to file a petition to review a denial of an extension of time to file an opposition or an interlocutory order of the Trademark Trial and Appeal Board (TTAB). You will need to use a serial number or registration number that is the subject of the proceeding before the TTAB and include proof of service.

Do not use this form to:

• Amend the basis for registration after publication. Instead, use the Petition to Change the Filing Basis After Publication form 9 below.
• Amend or correct a registration. Instead, use the Section 7 Request form.
• Petition the director to review the denial of a letter of protest. Instead, use the Letter of Protest form 10 below. In the body of the submission, indicate that you are filing a petition to the director because your letter of protest was denied.

4. Petition to Make Special

Use this form to petition to expedite initial examination of an application when there is pending litigation, actual or threatened infringement, or the need for a registration as a basis for securing a foreign registration. See TMEP §1710. You must comply with the requirements for filing a petition to the director, including a verified statement of the facts and the relief being requested, and the $100 petition fee. 37 C.F.R. §2.146.

5. Request to Restore Filing Date

Use this form if you previously filed an application that was denied a filing date and you have evidence to show that you met the minimum filing date requirements. You must first file a new application and have a new serial number to use the form. 

6. Request to Make Special

Use this form to request an expedited initial examination of an application because your prior registration was inadvertently canceled or expired for failure to file the necessary post-registration maintenance document. You must first file a new application and have a new serial number to use the form. Follow these requirements for the petition form:

• The petition must include the prior registration number.
• The mark in the new application must be identical to the mark in the canceled or expired registration.
• The goods/services in the new application must be identical to or narrower than the goods or services in the canceled or expired registration. 

7. Request for Reinstatement

In limited situations, you may use this form to request reinstatement of an application that was abandoned due to USPTO error. You must have clear evidence of USPTO error, and you must include the following with your request:

• Proof that the necessary response to an office action, statement of use, or extension request was timely filed
• Proof of actual receipt by the Office of a response to an office action, a statement of use, or an extension request
• Proof that the Office processed a fee in connection with the filing at issue
• Proof that the Office sent the office action or Notice of Abandonment to an address that is not the designated correspondence address
• Or other evidence or facts supported by a declaration, demonstrating Office error in abandoning the application.

Timeliness

You must file the request by these deadlines:

• If you received a Notice of Abandonment, you must file the request no later than two months from the issue date of that notice.
• If you did not receive a Notice of Abandonment, you must file the request no later than two months from the date you learned of the abandonment and no more than six months from the date Trademark Status and Document Retrieval (TSDR) shows the application was abandoned. 

NOTE: This form is only for requesting reinstatement of an abandoned application, not an abandoned registration. To request reinstatement of a registration canceled or expired due to USPTO error, use the Petition to the Director Under Trademark Rule 2.146 form 3 above. We will refund your petition fee if we determine you are entitled to reinstatement.

8. Due Diligence Petition Under Trademark Rule 2.66

This form is no longer available. Instead, you may use one of the petition to revive forms available above. If your application has been abandoned for more than six months, you must file either a new application or, if extraordinary circumstances justify a late filing of your petition to revive, a Petition to the Director Under Trademark Rule 2.146 form 3 above.

9. Petition to Change the Filing Basis After Publication

Use this form to change the filing basis for registration to Section 44(e) or Section 1(b) after your mark has published for opposition. The petition must include all necessary documents and declarations to support the amendment to the basis. For further information, see TMEP §806.03(j).

NOTE: If your application is based on both Section 44(e) and Section 1(b) and you want to delete the Section 1(b) basis, use the Request to Delete Section 1(b) Basis, Intent to Use form. If some of your goods/services are based on Section 44(e) and/or Section 1(a) and you want to delete the Section 1(b) goods, you must file an amendment using either the voluntary amendment form or post-publication amendment form.

10. Letter of Protest

Use this form to provide evidence to the USPTO to identify reasonable grounds for refusing a third party’s registration (such as likelihood of confusion with an existing registration, or evidence that a mark is descriptive). Prior use or allegations of fraud are not grounds for accepting a letter of protest. Do not provide arguments because they will not be considered.

The letter of protest should not be used to express public opinion about a particular mark. Trademark registration is governed by statutory laws and federal regulations. Public opinion may not influence the application process.

If your letter of protest refers to a prior pending application or registration, provide the relevant serial or registration numbers. However, if the goods or services in the protested application and the goods or services in the prior pending application or registration are not identical, you must also provide objective factual evidence that the goods and services are related. If you don’t provide evidence, your letter will not be accepted.

Timeliness

You should file a letter of protest before a mark is published in the Official Gazette. The letter may be accepted after publication, but only if you establish a prima facie case for refusal of registration, and only if you file it no later than thirty (30) days after the publication date. You cannot file a letter of protest for registered marks, but you can file a petition with the Trademark Trial and Appeal Board to cancel a registered mark.

For more information on letters of protest, see TMEP §1715.

NOTE: The Letter of Protest form may also be used to file a petition to the director to review the denial of a letter of protest. Use the Letter of Protest form rather than the 2.146 Petition to the Director form. You must comply with the requirements for filing a petition to the director, including the submission of a properly signed declaration in support of the facts and the $100 petition fee. 37 C.F.R. §§2.6(a)(15), 2.20 and 2.146. You may include authorization to charge the fee to a USPTO deposit account or submit a completed credit card authorization form with your filing.

11. Response to Petition to Revive Deficiency Letter

Use this form only to respond to a Notice of Incomplete Petition issued after your petition to revive was found to be incomplete.

12. Response to Petition to Director Inquiry Letter

Use this form only to respond to a Notice of Deficiency issued after your petition to the director was found to be incomplete.

13. Petition to Revive with Request to Delete Section 1(b) Basis or to Delete Intent-to-Use Goods/Services After Notice of Allowance

Use this form to file a petition to revive after a Notice of Allowance has issued and the application has abandoned for failure to file a statement of use, under one of the following limited situations:

• You are requesting to delete all of the intent-to-use goods/services in the application; or
• You are requesting to delete the intent-to-use basis in the application and rely on another basis already of record in the application.

You must include a statement that the delay in filing a response to the Notice of Allowance was unintentional. In addition, you must either request that all the goods/services that are based solely on intent to use be deleted from the application or request that the intent-to-use basis where there is already another basis for registration be deleted so that the application can proceed to registration based on either use in commerce or Section 44(e) which is already of record in the application.

14. Petition to Director to Review Denial of Certification of International Application

Use this form to file a petition to the director to review the USPTO Madrid Processing Unit’s denial of certification of an application for international registration through the Madrid Protocol. You must specify a USPTO reference number/control number to use this form. You must also include a clear statement of the relevant facts and any evidence, if necessary, supported by a declaration, where appropriate. Please see the important information in the Petition to Review Denial of Certification of an International Application Under the Madrid Protocol Information Sheet.

NOTE: You may file a petition with the Trademark Trial and Appeal Board to cancel a registration owned by another party under §14 of the Trademark Act. See overall category 10, Trademark Trial and Appeal Board Forms, on the Apply online page.