Revival of Abandoned Applications, Reinstatement of Abandoned Applications and Cancelled or Expired Registrations, and Petitions to the Director, 74997-75005 [2016-26035]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 81, Number 209 (Friday, October 28, 2016)]
[Proposed Rules]
[Pages 74997-75005]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-26035]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2010-0016]
RIN 0651-AC41


Revival of Abandoned Applications, Reinstatement of Abandoned 
Applications and Cancelled or Expired Registrations, and Petitions to 
the Director

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office or 
USPTO) proposes to amend its rules regarding petitions to revive an 
abandoned application and petitions to the Director of the USPTO 
(Director) regarding other matters, and to codify USPTO practice 
regarding requests for reinstatement of abandoned applications and 
cancelled or expired registrations. The proposed changes will permit 
the USPTO to provide more detailed procedures regarding the deadlines 
and requirements for requesting revival, reinstatement, or other action 
by the Director. These rules will thereby ensure that the public has 
notice of the deadlines and requirements for making such requests, 
facilitate the efficient and consistent processing of such requests, 
and promote the integrity of application/registration information in 
the trademark electronic records system as an accurate reflection of 
the status of applications and registrations.

DATES: Comments must be received by December 27, 2016 to ensure 
consideration.

ADDRESSES: The USPTO prefers that comments be submitted via electronic 
mail message to TMFRNotices@uspto.gov. Written comments also may be 
submitted by mail to the Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Jennifer Chicoski; by hand 
delivery to the Trademark Assistance Center, Concourse Level, James 
Madison Building--East Wing, 600 Dulany Street, Alexandria, VA 22314, 
attention Jennifer Chicoski; or by electronic mail message via the 
Federal eRulemaking Portal at https://www.regulations.gov. See the 
Federal eRulemaking Portal Web site for additional instructions on 
providing comments via the Federal eRulemaking Portal. All comments 
submitted directly to the USPTO or provided on the Federal eRulemaking 
Portal should include the docket number (PTO-T-2010-0016).
    The comments will be available for public inspection on the USPTO's 
Web site at https://www.uspto.gov, on the Federal eRulemaking Portal, 
and at the Office of the Commissioner for Trademarks, Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, VA 22314. Because comments 
will be made available for public inspection, information that is not 
desired to be made public, such as an address or phone number, should 
not be included.

FOR FURTHER INFORMATION CONTACT: Jennifer Chicoski, Office of the 
Deputy Commissioner for Trademark Examination Policy, by email at 
TMPolicy@uspto.gov, or by telephone at (571) 272-8943.

SUPPLEMENTARY INFORMATION: 
    Purpose: The USPTO proposes to revise the rules in part 2 of title 
37 of the Code of Federal Regulations to provide more detailed 
procedures regarding the deadlines and requirements for petitions to 
revive an abandoned application under 37 CFR 2.66 and petitions to the 
Director under 37 CFR 2.146. The proposed changes also codify USPTO 
practice regarding requests for reinstatement of applications that were 
abandoned, and registrations that were cancelled or expired, due to 
Office error. By providing more detailed procedures regarding 
requesting revival, reinstatement, or other action by the Director, the 
proposed rule will benefit applicants, registrants, and the public 
because it will promote the integrity of application/registration 
information in the trademark electronic records system as an accurate 
reflection of the status of live applications and registrations, 
clarify the time periods in which applications or registrations can be 
revived or reinstated after abandonment or cancellation as well as 
inform of the related filing requirements, clarify the deadline for 
requesting that the Director take action regarding other matters, and 
facilitate the efficient and consistent handling of such requests.
    The public relies on the trademark electronic records system to 
determine whether a chosen mark is available for use or registration. 
Applicants are encouraged to utilize the trademark electronic search 
system, which provides access to text and images of marks, to determine 
whether a mark in any pending application or current registration is 
similar to their mark and used on the same or related products or for 
the same or related services. The search system also indicates the 
status of an application or registration, that is,

[[Page 74998]]

whether the application or registration is live or dead. A ``live'' 
status indicates the application or registration is active and may bar 
the registration of a similar mark in a new application. A ``dead'' 
status indicates the application has become abandoned or the 
registration is cancelled or expired, and does not serve as a bar to 
registration of a similar mark in a new application unless it is 
restored to a live status pursuant to a corresponding rule.
    When a party's search discloses a potentially confusingly similar 
mark, that party may incur a variety of resulting costs and burdens, 
such as those associated with investigating the actual use of the 
disclosed mark to assess any conflict, proceedings to cancel the 
registration or oppose the application of the disclosed mark, civil 
litigation to resolve a dispute over the mark, or changing plans to 
avoid use of the party's chosen mark. In order to determine whether to 
undertake one or more of these actions, the party would refer to the 
status of the conflicting application/registration and would need to 
consult the relevant rule to determine whether the application or 
registration is within the time period in which the applicant or 
registrant may request revival, reinstatement, or other action by the 
Director. Thus, the effective notice provided by the USPTO's records 
plays a critical role in a party's decision-making to clearly 
distinguish between the ``dead'' marks that are no longer candidates 
for, or protected by, a federal registration and those that are still 
able to be restored to active status.
    The USPTO estimates that it receives annually approximately 20,000 
petitions to revive an application under Sec.  2.66 abandoned for 
failure to respond to an Office action or a notice of allowance, 1,200 
petitions to the Director under Sec.  2.146, and 300 requests for 
reinstatement of applications and registrations. If the trademark 
electronic records system indicates that an application or registration 
is dead because it is abandoned, cancelled, or expired, and there is 
any doubt as to whether the application or registration might be 
eligible for revival, reinstatement, or other action by the Director, 
the costs and burdens discussed above may be incurred unnecessarily. By 
providing more detailed procedures as to the deadlines and requirements 
for requesting revival, reinstatement, or other action by the Director, 
the proposed rules will help the public avoid such needless costs and 
burdens and promote the efficient and consistent processing of such 
requests by the Office.

Background

    Petition to Revive: The statutory period for responding to an 
examining attorney's Office action is six months from the Office 
action's date of issuance. 15 U.S.C. 1062(b); 37 CFR 2.62(a). If no 
response is received by the USPTO within the statutory period, and the 
Office action was sent to the correspondence address in the USPTO's 
records, the application is then abandoned in full or in part, as 
appropriate. 37 CFR 2.65(a); Trademark Manual of Examining Procedure 
(TMEP) Sec.  718.06.
    The statutory period for filing a statement of use, or a request 
for an extension of time to file a statement of use, in response to a 
notice of allowance issued under section 1063(b)(2) of the Trademark 
Act (Act), is also six months. 15 U.S.C. 1051(d)(1), (2); 37 CFR 
2.88(a), 2.89(a). Thus, an application is abandoned if the applicant 
fails to file a statement of use or request for an extension of time to 
file a statement of use within the statutory period or within a 
previously granted extension period. 37 CFR 2.88(k); TMEP Sec.  718.04.
    An application is considered to be abandoned as of the day after 
the date on which a response to an Office action or notice of allowance 
is due. However, to accommodate timely mailed paper submissions and to 
ensure that the required response was not received and placed in the 
record of another application (e.g., if the applicant enters the 
incorrect serial number on its response), the USPTO generally waits one 
month after the due date to update the trademark electronic records 
system to reflect the abandonment. TMEP Sec.  718.06. When the 
trademark electronic records system is updated, the USPTO sends a 
computer-generated notice of abandonment to the correspondence address 
listed in the application. Id. If an application becomes abandoned for 
failure to respond to an Office action or notice of allowance within 
the statutory period, and the delay in responding was unintentional, 
the application may be revived upon proper submission of a petition 
under 37 CFR 2.66. Currently, the deadlines for filing the petition are 
within two months after the date of issuance of the notice of 
abandonment or within two months of actual knowledge of the 
abandonment, if the applicant did not receive the notice of abandonment 
and the applicant was diligent in checking the status of the 
application every six months. 37 CFR 2.66(a).
    Request for Reinstatement: Under current practice, if an applicant 
has proof that an application was inadvertently abandoned due to a 
USPTO error, an applicant may file a request to reinstate the 
application, instead of a petition to revive. TMEP Sec.  1712.01. The 
following is a non-exhaustive list of examples of situations in which 
the USPTO may reinstate an application held abandoned for failure to 
respond to an Office action or notice of allowance: (1) The applicant 
presents proof that a response to an Office action, statement of use, 
or request for extension of time to file a statement of use was timely 
filed through the Trademark Electronic Application System (TEAS); (2) 
there is an image of the timely filed response, statement of use, or 
extension request in the trademark electronic records system; or (3) 
the applicant supplies a copy of the document and proof that it was 
timely mailed to the USPTO in accordance with the requirements of 37 
CFR 2.197. Id. Under current practice, a request for reinstatement must 
be filed within two months of the issuance date of the notice of 
abandonment. Id. If the applicant asserts that it did not receive a 
notice of abandonment, the request must be filed within two months of 
the date the applicant had actual knowledge that the application was 
abandoned, and the applicant must have been duly diligent in monitoring 
the status of the application every six months. Id.
    Similarly, under current practice, a registrant may file a request 
to reinstate a cancelled or expired registration if the registrant has 
proof that a required document was timely filed and that USPTO error 
caused the registration to be cancelled or expired. TMEP Sec.  1712.02. 
The following is a non-exhaustive list of examples of situations in 
which the USPTO may reinstate a cancelled or expired registration: (1) 
The registrant presents proof that a required document was timely filed 
through TEAS; (2) the registrant presents proof of actual receipt of 
the required document in the USPTO in the form of a return postcard 
showing a timely USPTO date stamp or label, on which the registrant 
specifically refers to the document; or (3) the USPTO sent an Office 
action to the wrong address due to a USPTO error, i.e., the USPTO 
either entered the correspondence address incorrectly or failed to 
enter a proper notice of change of address filed before the issuance 
date of the action. Id. There is currently no deadline for filing a 
request to reinstate a cancelled/expired registration and the USPTO has 
generally not invoked the requirement for due diligence when there is 
proof that a registration was cancelled or

[[Page 74999]]

expired solely due to USPTO error. TMEP Sec.  1712.02(a).
    Petition to the Director Under 37 CFR 2.146: Applicants, 
registrants, and parties to inter partes proceedings before the 
Trademark Trial and Appeal Board (TTAB) who believe they have been 
injured by certain adverse actions of the USPTO, or who believe that 
they cannot comply with the requirements of the Trademark Rules of 
Practice (37 CFR parts 2, 3, 6, and 7) because of an extraordinary 
situation, may seek equitable relief by filing a petition under 37 CFR 
2.146. A variety of issues may be reviewed on petition under this 
section. Some of the more common examples are when a party petitions 
the Director to: (1) Review an examining attorney's formal requirement, 
if the requirement is repeated or made final and the subject matter is 
appropriate for petition; (2) review the action of the Post 
Registration Unit refusing an affidavit of use or excusable nonuse 
under section 8 or section 71 of the Act, 15 U.S.C. 1058, 1141k, a 
renewal application under section 9 of the Act, 15 U.S.C. 1059, or a 
proposed amendment to a registration under section 7 of the Act, 15 
U.S.C. 1057; or (3) review the refusal of the Madrid Processing Unit to 
certify an application for international registration. See TMEP Sec.  
1703. Generally, unless a specific deadline is specified elsewhere in 
the rules or within this section, such as the deadlines for petitions 
regarding actions of the TTAB under Sec.  2.146(e), a petition must be 
filed within two months of the date of issuance of the action from 
which relief is requested and no later than two months from the date 
when Office records are updated to show that a registration has been 
cancelled or has expired under Sec.  2.146(d). However, under current 
Sec.  2.146(i), if a petitioner seeks to reactivate an application or 
registration that was abandoned, cancelled, or expired because 
documents not received by the Office were lost or mishandled, the 
petitioner is also required to be duly diligent in checking the status 
of the application or registration. The section has traditionally been 
invoked when papers submitted pursuant to the mailing rules in Sec.  
2.197 and Sec.  2.198 were lost. However, the occurrence of such 
incidents is minimal. Further, the USPTO believes that if an applicant 
or registrant has proof that documents mailed in accordance with the 
requirements of Sec.  2.197 or Sec.  2.198 were lost or mishandled by 
the USPTO, thereby causing the abandonment of an application or 
cancellation/expiration of a registration, the proper recourse will be 
to seek relief under the proposed rule for requesting reinstatement.
    Establishing Due Diligence: As noted above, if an applicant or 
registrant does not receive a notice from the USPTO regarding the 
abandonment of its application, cancellation/expiration of its 
registration, or denial of some other request, but otherwise learns of 
the abandonment, cancellation/expiration, or denial, the applicant or 
registrant must have been duly diligent in tracking the status of its 
application or registration in order to be granted revival, 
reinstatement, or other action by the Director. Section 2.146(i) sets 
out the standard of due diligence for petitions to revive and to 
reactivate an application or registration that was abandoned, 
cancelled, or expired because documents were lost or mishandled. To be 
considered duly diligent, an applicant must check the status of the 
application at least every six months between the filing date of the 
application and issuance of a registration. 37 CFR 2.146(i)(1). After 
filing an affidavit of use or excusable nonuse under section 8 or 
section 71 of the Act or a renewal application under section 9 of the 
Act, a registrant must check the status of the registration every six 
months until the registrant receives notice that the affidavit or 
renewal application has been accepted. 37 CFR 2.146(i)(2). Section 
2.146(d) sets out the standard currently followed for requests to 
reinstate an application abandoned due to Office error. TMEP Sec.  
1712.01. When a party seeks to revive an application that was abandoned 
or reinstate a registration that was cancelled or expired, either due 
to the failure of the applicant or registrant to file a required 
document or to the loss or mishandling of documents sent to or from the 
USPTO, or asks the Director to take some other action, the USPTO may 
deny the request if the petitioner was not diligent in checking the 
status of the application or registration, even if the petitioner can 
show that the USPTO actually received documents, or declares that a 
notice from the USPTO was never received by the petitioner. 37 CFR 
2.146(i).
    The USPTO generally processes applications, responses, and other 
documents in the order in which they are received, and it is reasonable 
to expect some notice or acknowledgement from the USPTO regarding 
action on a pending matter within six months of the filing or receipt 
of a document. A party who has not received a notice or acknowledgement 
from the USPTO within that time frame has the burden of inquiring as to 
the status of action on its filing, and requesting in writing that 
corrective action be taken when necessary, to protect third parties who 
may be harmed by reliance on inaccurate information regarding the 
status of an application or registration in the trademark electronic 
records system. See TMEP Sec.  1705.05. For example, a third party may 
have searched USPTO records and begun using a mark because the search 
showed that an earlier-filed application, or prior registration, for a 
conflicting mark had been abandoned or cancelled. In other cases, an 
examining attorney may have searched USPTO records and approved for 
publication a later-filed application for a conflicting mark because 
the earlier-filed application was shown as abandoned or a prior 
registration was shown as cancelled.
    The due-diligence requirement means that any petition filed more 
than two months after the notice of abandonment or cancellation was 
issued, or no later than two months after Office records are updated, 
is likely to be dismissed as untimely because the applicant or 
registrant will be unable to establish that it was duly diligent. For 
example, if an applicant files an application in July 1, 2016 and an 
Office action is issued on October 15, 2016, a response must be filed 
on or before April 15, 2017. If the applicant does not respond, the 
trademark electronic records system will be updated to show the 
application as abandoned and a notice of abandonment will be sent to 
the applicant on or about May 15, 2017. If the applicant does not 
receive the notice of abandonment, and only checks the trademark 
electronic records system in August 2017 (i.e., more than two months 
after the issue date of the notice of abandonment and more than a year 
after filing), and thereafter files a petition to revive, that petition 
would be denied as untimely. Even if the applicant asserts that it only 
became aware of the issuance of the Office action and the notice of 
abandonment on, for example, July 18, 2017 (actual notice), the 
petition would be denied as untimely because the applicant could not 
prove that it was duly diligent in monitoring the status of the 
application by checking the status every six months.
    Moreover, in some situations when an applicant or owner of a 
registration asserts that it did not receive a notice of abandonment or 
cancellation, it is often difficult for the USPTO to determine when the 
party had actual notice of the abandonment/cancellation and whether the 
party was duly diligent in prosecuting the application or maintaining 
the registration. By effectively mandating that applicants and 
registrants conduct the requisite

[[Page 75000]]

status checks of Office records every six months from the filing of a 
document, whether an application or a submission requesting action by 
the Office, parties would be aware of the acceptance or refusal of 
their submission with enough notice to timely respond in the vast 
majority of circumstances. For example, if a document is filed on 
January 2, and an Office action requiring a response within six months 
is issued on February 2, if the submitting party is duly diligent and 
reviews the trademark electronic records system on July 2, it would 
learn of the issuance of the action, even if the party did not receive 
it. In that situation, the party would still have one month in which to 
timely respond.

Discussion of Proposed Changes and Rulemaking Goals

    Establish Certainty Regarding Timeliness: The goals of the proposed 
changes are to harmonize the deadlines for requesting revival, 
reinstatement, or other action by the Director and remove any 
uncertainty for applicants, registrants, third parties, and the Office 
as to whether a request is timely.
    Under this proposed rule, the USPTO adds Sec. Sec.  2.64(a)(1)(i) 
and (b)(1)(i) and amends Sec. Sec.  2.66(a)(1) and 2.146(d)(1) to 
clarify that applicants and registrants would be on notice that if they 
receive an official document from the USPTO, such as a notice of 
abandonment or cancellation, a post-registration Office action, or a 
denial of certification of an international registration, they must 
file a petition to revive, request for reinstatement, or petition to 
the Director to take another action, by not later than two months after 
the issue date of the notice. The proposed addition of Sec. Sec.  
2.64(a)(1)(i) and (b)(1)(i) codifies this deadline for parties seeking 
reinstatement of an application or registration abandoned or cancelled 
due to Office error and makes it consistent with the deadline in Sec.  
2.66(a)(1). The proposed amendment to Sec.  2.66(a) clarifies that the 
deadline applies to abandonments in full or in part. Finally, the 
proposed change to Sec.  2.146(d)(1) deletes the requirement that a 
petition be filed no later than two months from the date when Office 
records are updated to show that a registration is cancelled or 
expired. As noted below, this deadline is extended to not later than 
six months after the date the trademark electronic records system 
indicates that the registration is cancelled/expired to harmonize the 
deadlines across the relevant sections.
    To establish certainty and ensure consistency, the proposed rule 
also adds Sec. Sec.  2.64(a)(1)(ii) and (b)(1)(ii) to codify the 
deadline for all applicants and registrants who assert that they did 
not receive an abandonment notice from the Office and thereafter seek 
reinstatement. This deadline is identical to the deadlines proposed in 
Sec. Sec.  2.66(a)(2) and 2.146(d)(2) for applicants and registrants 
who assert that they did not receive a notice from the Office and 
thereafter seek relief. Under proposed Sec. Sec.  2.64(a)(1)(ii) and 
(b)(1)(ii), if the applicant or registrant did not receive the notice, 
or no notice was issued, a petition must be filed by not later than two 
months of actual knowledge that a notice was issued or that an action 
was taken by the Office, and not later than six months after the date 
the trademark electronic records system is updated to indicate the 
action taken by the Office. Thus, this proposed rule makes clear that 
applicants and registrants must check the status of their applications 
and registrations every six months and thereby remove any uncertainty 
in the Office's assessment of whether an applicant or registrant was 
duly diligent.
    Balance Duties of USPTO to Registrants and Third Parties: Under 
this proposed rule, the USPTO would add Sec.  2.64(b)(2)(ii) and amend 
Sec.  2.146(d)(2)(ii) to include the requirement for due diligence in 
tracking the status of a registration. Registrants who seek 
reinstatement of a registration cancelled due to Office error, but who 
assert that they did not receive a notice of cancellation/expiration, 
must file the request by not later than 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.
    As noted above, the USPTO has generally not invoked the requirement 
for due diligence when there is proof that a registration was cancelled 
or expired solely due to Office error. Although the USPTO has a duty to 
correct its errors, the USPTO has a concurrent duty toward third 
parties to ensure that the trademark electronic records system 
accurately reflects the status of applications and registrations, 
especially given that the USPTO encourages such third parties to search 
the trademark electronic records system prior to adopting or seeking to 
register a mark. Therefore, the USPTO must balance its duty to third 
parties who rely on the accuracy of the trademark electronic records 
system and to registrants whose registration may have been cancelled as 
a result of Office error. The USPTO believes that, in order to fulfill 
its duty to all parties, the requirement for due diligence should apply 
equally to registrants who did not receive a notice of cancellation/
expiration and who request reinstatement of their registrations, as it 
does to all other applicants and registrants who do not receive notice 
of any other action taken by the Office. As noted above, it is 
reasonable to expect some notice or acknowledgement from the USPTO 
regarding action on a pending matter within six months of the filing of 
a document. A registrant who has not received a notice or 
acknowledgement from the USPTO regarding a post-registration 
maintenance, renewal, or amendment document within that time frame has 
the burden of inquiring as to the status of the USPTO's action on the 
filing, and requesting in writing that corrective action be taken when 
necessary, to protect third parties who may be harmed by reliance on 
inaccurate information regarding the status of its registration in the 
trademark electronic records system.
    Maintain Pendency: The USPTO proposes changes to Sec.  2.66 to 
prevent applicants from utilizing the revival process to delay 
prosecution by repeatedly asserting non-receipt of an Office action or 
notice of allowance. Specifically, the regulations at Sec.  2.66(b) are 
amended to clarify that a response to the outstanding Office action is 
required or, if the applicant asserts it did not receive the Office 
action, that the applicant may not assert more than once that the 
unintentional delay is based on non-receipt of the same Office action. 
The USPTO also adds Sec.  2.66(b)(3)(i)-(ii) to clarify the 
requirements for requesting revival when the abandonment occurred after 
a final Office action.
    An application is considered to be abandoned as of the day after 
the date on which a response to the Office action or notice of 
allowance is due. However, to accommodate timely mailed paper 
submissions and to ensure that the required response was not received 
and placed in the record of another application (e.g., if the applicant 
enters the incorrect serial number on its response), the USPTO 
generally waits until one month after the due date to send the notice 
of abandonment and update the trademark electronic records system to 
indicate that the application is abandoned.
    In some situations, an application will become abandoned multiple 
times for failure to respond to an Office action or notice of allowance 
and the applicant will assert that it did not receive the same Office 
action or the notice of allowance each time that it petitions to revive 
the application. Under the

[[Page 75001]]

proposed regulations at Sec.  2.66(b), the Office would limit the 
applicant's ability to assert more than once that the unintentional 
delay is based on non-receipt of the same Office action. When an 
applicant becomes aware that its application has been abandoned, either 
via receipt of a notice of abandonment or after checking the status of 
the application, the applicant is thereby on notice that the Office has 
taken action on the application. If the applicant then files a petition 
to revive an application held abandoned for failure to respond to an 
Office action which states that the applicant did not receive the 
action, and the petition is granted, the USPTO will issue a new Office 
action, if there are additional issues since the original Office action 
was sent, and provide the applicant with a new six-month response 
period. If all issues previously raised remain the same, after reviving 
the application, the USPTO will send a notice to the applicant 
directing the applicant to view the previously issued Office action in 
the electronic file for the application available on the USPTO's Web 
site and provide the applicant with a new six-month response period. 
When a petition to revive an application for failure to respond to a 
notice of allowance states that the applicant did not receive the 
notice, and the petition is granted, the USPTO will cancel the original 
notice of allowance and issue a new notice, giving the applicant a new 
six-month period in which to file a statement of use or request for 
extension of time to file a statement of use.
    In either situation, the USPTO sends the new Office action or 
notice of allowance to the correspondence address of record. In 
general, under the current regulations at 37 CFR 2.18, the owner of an 
application has a duty to maintain a current and accurate 
correspondence address with the USPTO, which may be either a physical 
or email address. If the correspondence address changes, the USPTO must 
be promptly notified in writing of the new address. If the 
correspondence address has not changed in the USPTO records since the 
filing of the application, the applicant is on notice that documents 
regarding its application are being sent to that address by virtue of 
its awareness of the abandonment of the application and its subsequent 
filing of the petition to revive.
    Allowing an applicant who is on notice that the Office has taken 
action in an application to continually assert non-receipt of the same 
Office action or notice of allowance significantly delays prosecution 
of the application. It also results in uncertainty for the public, 
which relies on the trademark electronic records system to determine 
whether a chosen mark is available for use or registration. Therefore, 
because the applicant is on notice that documents regarding its 
application are being sent to the address of record, this proposed rule 
would limit an applicant to asserting only once that the unintentional 
delay is based on non-receipt of the same Office action or notice of 
allowance. If the correspondence address has changed since the filing 
of the application, the applicant is responsible for updating the 
address, as noted above, so that any further Office actions or notices 
will be sent to the correct address.
    Codify Requirements for Reinstatement: The USPTO proposes new 
regulations at Sec.  2.64 to codify the requirements for seeking 
reinstatement of an application that was abandoned or a registration 
that was cancelled or expired due to Office error. The proposed 
regulations indicate that there is no fee for requesting reinstatement. 
They also set out the deadlines for submitting such requests, as 
discussed under the heading ``Establish Certainty Regarding 
Timeliness,'' and the nature of proof necessary to support an 
allegation of Office error in the abandonment of the relevant 
application or cancellation of the relevant registration. Further, the 
proposed regulation provides an avenue for requesting waiver of the 
requirements if the applicant or registrant is not entitled to 
reinstatement.
    The rationale for the proposed changes to the deadline for 
requesting reinstatement of a registration when the registrant did not 
receive a notice of cancellation is discussed above. The TMEP currently 
sets out the deadlines for requesting reinstatement of an application 
or registration that was abandoned, cancelled, or expired due to Office 
error. TMEP Sec. Sec.  1712.01, 1712.02(a). Other requirements, such as 
the nature of proof required to establish Office error, are also set 
out in the TMEP. However, although the TMEP sets out the deadlines and 
guidelines for submitting and handling requests for reinstatement, it 
does not have the force of law. Codifying the deadlines for filing a 
request for reinstatement in a separate rule that also lists the types 
of proof necessary to warrant such remedial action would provide clear 
and definite standards regarding an applicant's or registrant's burden. 
It would also furnish the legal underpinnings of the Office's authority 
to grant or deny a request for reinstatement as well as provide 
applicants and owners of registrations with the benefit of an 
entitlement to relief when the standards of the rules are met.
    If an applicant or registrant is found not to be entitled to 
reinstatement, the proposed rule also provides a possible avenue of 
relief in that the request may be construed as a petition to the 
Director under Sec.  2.146 or a petition to revive under Sec.  2.66, if 
appropriate. In addition, if the applicant or registrant is unable to 
meet the timeliness requirement for filing the request, the proposed 
rule provides that the applicant or registrant may submit a petition to 
the Director under Sec.  2.146(a)(5) to request a waiver of that 
requirement.
    Summary of Major Provisions: As stated above, the USPTO proposes to 
revise the rules in part 2 of title 37 of the Code of Federal 
Regulations to clarify the requirements for seeking revival of an 
abandoned application, reinstatement of an application or registration, 
or submitting a petition to the Director to take some other action.

Discussion of Proposed Regulatory Changes

    The USPTO proposes to add Sec.  2.64 and to amend Sec. Sec.  2.66 
and 2.146 to clarify the requirements for submitting petitions to 
revive an abandoned application and petitions to the Director regarding 
other matters, as described in the section-by-section analysis below.
    The USPTO proposes to add Sec.  2.64 to codify the requirements for 
requests to reinstate an application that was abandoned, or a 
registration that was cancelled or expired, due to Office error.
    The USPTO proposes to amend the title of Sec.  2.66 to ``Revival of 
applications abandoned in full or in part due to unintentional delay.''
    The USPTO proposes to amend Sec.  2.66(a) by adding the title 
``Deadline'' and the wording ``in full or in part'' and ``by not later 
than;'' to amend Sec.  2.66(a)(1) by indicating that the deadline is 
not later than two months after the issue date of the notice of 
abandonment in full or in part; and to amend Sec.  2.66(a)(2) by 
revising the deadline if the applicant did not receive the notice of 
abandonment.
    The USPTO proposes to amend Sec.  2.66(b) by adding the title 
``Petition to Revive Application Abandoned in Full or in Part for 
Failure to Respond to an Office Action'' and rewording the paragraph 
for clarity and to add ``in full or in part''; revising Sec.  
2.66(b)(3) to clarify that a response to the outstanding Office action 
is required or, if the applicant asserts it did not receive the Office 
action, that the applicant may not assert more than once that the 
unintentional delay is based on non-receipt of the same Office action; 
and

[[Page 75002]]

adding Sec.  2.66(b)(3)(i)-(ii) to set out the requirements for 
requesting revival when the abandonment occurs after a final Office 
action.
    The USPTO proposes to amend Sec.  2.66(c) by adding the title 
``Petition to Revive Application Abandoned for Failure to Respond to a 
Notice of Allowance;'' adding Sec.  2.66(c)(2)(i)-(iv) to incorporate 
and further clarify requirements in current Sec. Sec.  2.66(c)(4) and 
(5); deleting current Sec.  2.66(c)(3)-(4); and redesignating current 
Sec.  2.66(c)(5) as Sec.  2.66(c)(3) and deleting the wording prior to 
``the applicant must file.''
    The USPTO proposes to amend Sec.  2.66(d) by adding the title 
``Statement of Use or Petition to Substitute a Basis May Not Be Filed 
More Than 36 Months After Issuance of the Notice of Allowance'' and 
rewording the paragraph for clarity.
    The USPTO proposes to delete current Sec.  2.66(e).
    The USPTO proposes to redesignate current Sec.  2.66(f) as Sec.  
2.66(e), add the title ``Request for Reconsideration,'' reword the 
paragraph for clarity, and revise paragraphs (1) and (2) to clarify the 
requirements for requesting reconsideration of a petition to revive 
that has been denied.
    The USPTO proposes to amend Sec.  2.146(b) by deleting the wording 
``considered to be.''
    The USPTO proposes to amend Sec.  2.146(d) by deleting the current 
paragraph and adding a sentence introducing new Sec.  2.146(d)(1)-
(2)(iii), which sets out the deadlines for filing a petition.
    The USPTO proposes to amend Sec.  2.146(e)(1) by changing the 
wording ``within fifteen days from the date of issuance'' and ``within 
fifteen days from the date of service'' to ``by not later than fifteen 
days after the issue date'' and '' by not later than fifteen days after 
the date of service.'' The USPTO proposes to amend Sec.  2.146(e)(2) by 
changing the wording ``within thirty days after the date of issuance'' 
and ``within fifteen days from the date of service'' to ``by not later 
than thirty days after the issue date'' and ``by not later than fifteen 
days after the date of service.''
    The USPTO proposes to delete current Sec.  2.146(i).
    The USPTO proposes to redesignate current Sec.  2.146(j) as new 
Sec.  2.146(i), to delete the wording ``the petitioner,'' and to revise 
paragraphs (1) and (2) to clarify the requirements for requesting 
reconsideration of a petition to revive that has been denied.

Rulemaking Considerations

    Administrative Procedure Act: The changes in this proposed 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 
1204 (2015) (interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers'') 
(citation and internal quotation marks omitted); Nat'l Org. of 
Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 
(Fed. Cir. 2001) (rule that clarifies interpretation of a statute is 
interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. 
Cir. 2001) (rules governing an application process are procedural under 
the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 
244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this proposed rulemaking are not required pursuant to 5 
U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 
(notice-and-comment procedures are required neither when an agency 
``issue[s] an initial interpretive rule'' nor ``when it amends or 
repeals that interpretive rule''); Cooper Techs. Co. v. Dudas, 536 F.3d 
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 
U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice,'' quoting 5 U.S.C. 
553(b)(A)).
    Regulatory Flexibility Act: Under the Regulatory Flexibility Act 
(RFA) (5 U.S.C. 601 et seq.), whenever an agency is required by 5 
U.S.C. 553 (or any other law) to publish a notice of proposed 
rulemaking (NPRM), the agency must prepare and make available for 
public comment an Initial Regulatory Flexibility Analysis, unless the 
agency certifies under 5 U.S.C. 605(b) that the proposed rule, if 
implemented, will not have a significant economic impact on a 
substantial number of small entities. 5 U.S.C. 603, 605.
    For the reasons set forth herein, the Deputy General Counsel for 
General Law of the United States Patent and Trademark Office has 
certified to the Chief Counsel for Advocacy of the Small Business 
Administration that this rule will not have a significant economic 
impact on a substantial number of small entities. See 5 U.S.C. 605(b).
    This proposed rule would amend the regulations to provide detailed 
deadlines and requirements for petitions to revive an abandoned 
application and petitions to the Director regarding other matters, and 
to codify USPTO practice regarding requests for reinstatement of 
abandoned applications and cancelled or expired registrations. The 
proposed rule will apply to all persons seeking a revival or 
reinstatement of an abandoned trademark application or registration, or 
other equitable action by the Director. Applicants for a trademark are 
not industry specific and may consist of individuals, small businesses, 
non-profit organizations, and large corporations. The USPTO does not 
collect or maintain statistics on small- versus large-entity 
applicants, and this information would be required in order to 
determine the number of small entities that would be affected by the 
proposed rule.
    The burdens to all entities, including small entities, imposed by 
these rule changes will be minor procedural requirements on parties 
submitting petitions to revive an abandoned application and petitions 
to the Director regarding other matters, and those submitting requests 
for reinstatement of abandoned applications and cancelled or expired 
registrations. The proposed changes do not impose any additional 
economic burden in connection with the proposed changes as they merely 
clarify existing requirements or codify existing procedures.
    Executive Order 12866 (Regulatory Planning and Review): This 
proposed rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).
    Executive Order 13563 (Improving Regulation and Regulatory Review): 
The USPTO has complied with Executive Order 13563 (Jan. 18, 2011). 
Specifically, the USPTO has, to the extent feasible and applicable: (1) 
Made a reasoned determination that the benefits justify the costs of 
the rule changes; (2) tailored the rules to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) provided the public with a meaningful opportunity to 
participate in the regulatory process, including soliciting the views 
of those likely affected prior to issuing a notice of proposed 
rulemaking, and provided online access to the rulemaking docket; (7) 
attempted to promote coordination, simplification, and harmonization 
across government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and

[[Page 75003]]

technological information and processes, to the extent applicable.
    Executive Order 13132 (Federalism): This proposed rulemaking does 
not contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    Unfunded Mandates Reform Act of 1995: The changes in this proposed 
rulemaking do not involve a Federal intergovernmental mandate that will 
result in the expenditure by State, local, and tribal governments, in 
the aggregate, of 100 million dollars (as adjusted) or more in any one 
year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    Paperwork Reduction Act: This rulemaking involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this rule has been reviewed and previously approved by OMB under 
control numbers 0651-0051, 0651-0054, and 0651-0061.
    You may send comments regarding the collections of information 
associated with this rule, including suggestions for reducing the 
burden, to (1) The Office of Information and Regulatory Affairs, Office 
of Management and Budget, New Executive Office Building, Room 10202, 
725 17th Street NW., Washington, DC 20503, Attention: Nicholas A. 
Fraser, the Desk Officer for the United States Patent and Trademark 
Office; and (2) The Commissioner for Trademarks, by mail to P.O. Box 
1451, Alexandria, VA 22313-1451, attention Catherine Cain; by hand 
delivery to the Trademark Assistance Center, Concourse Level, James 
Madison Building--East Wing, 600 Dulany Street, Alexandria, VA 22314, 
attention Catherine Cain; or by electronic mail message via the Federal 
eRulemaking Portal. All comments submitted directly to the USPTO or 
provided on the Federal eRulemaking Portal should include the docket 
number (PTO-T-2010-0016).
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

    For the reasons stated in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office 
proposes to amend part 2 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for 37 CFR Part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section 
10(c) of Pub. L. 112-29, unless otherwise noted.

0
2. Add Sec.  2.64 to read as follows:


Sec.  2.64  Reinstatement of applications and registrations abandoned, 
cancelled, or expired due to Office error.

    (a) Request for Reinstatement of an Abandoned Application. The 
applicant may file a written request to reinstate an application 
abandoned due to Office error. There is no fee for a request for 
reinstatement.
    (1) Deadline. The applicant must file the request by not later 
than:
    (i) Two months after the issue date of the notice of abandonment; 
or
    (ii) 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 Sec.  2.20 or 28 U.S.C. 1746 that it 
did not receive the notice of abandonment.
    (2) Requirements. A request to reinstate an application abandoned 
due to Office error must include:
    (i) Proof that a response to an Office action, a statement of use, 
or a request for extension of time to file a statement of use was 
timely filed and a copy of the relevant document;
    (ii) Proof of actual receipt by the Office of a response to an 
Office action, a statement of use, or a request for extension of time 
to file a statement of use and a copy of the relevant document;
    (iii) Proof that the Office processed a fee in connection with the 
filing at issue and a copy of the relevant document;
    (iv) Proof that the Office sent the Office action or notice of 
allowance to an address different than that designated by the applicant 
as the correspondence address; or
    (v) Other evidence, or factual information supported by a 
declaration under Sec.  2.20 or 28 U.S.C. 1746, demonstrating Office 
error in abandoning the application.
    (b) Request for Reinstatement of Cancelled or Expired Registration. 
The registrant may file a written request to reinstate a registration 
cancelled or expired due to Office error. There is no fee for the 
request for reinstatement.
    (1) Deadline. The registrant must file the request by not later 
than:
    (i) Two months after the issue date of the notice of cancellation/
expiration; or
    (ii) Two months after the date of actual knowledge of the 
cancellation/expiration and not later than six months after the date 
the trademark electronic records system indicates that the registration 
is cancelled/expired, where the registrant declares under Sec.  2.20 or 
28 U.S.C. 1746 that it did not receive the notice of cancellation/
expiration or the Office did not issue a notice.
    (2) Requirements. A request to reinstate a registration cancelled/
expired due to Office error must include:
    (i) Proof that an affidavit or declaration of use or excusable 
nonuse, a renewal application, or a response to an Office action was 
timely filed and a copy of the relevant document;
    (ii) Proof of actual receipt by the Office of an affidavit or 
declaration of use or excusable nonuse, a renewal application, or a 
response to an Office action and a copy of the relevant document;
    (iii) Proof that the Office processed a fee in connection with the 
filing at issue and a copy of the relevant document;
    (iv) Proof that the Office sent the Office action to an address 
different than that designated by the registrant as the correspondence 
address; or

[[Page 75004]]

    (v) Other evidence, or factual information supported by a 
declaration under Sec.  2.20 or 28 U.S.C. 1746, demonstrating Office 
error in cancelling/expiring the registration.
    (c) Request for Reinstatement May be Construed as Petition. If an 
applicant or registrant is not entitled to reinstatement, a request for 
reinstatement may be construed as a petition to the Director under 
Sec.  2.146 or a petition to revive under Sec.  2.66, if appropriate. 
If the applicant or registrant is unable to meet the timeliness 
requirement under paragraphs (a)(ii) or (b)(ii) for filing the request, 
the applicant or registrant may submit a petition to the Director under 
Sec.  2.146(a)(5) to request a waiver of the rule.
0
3. Revise Sec.  2.66 to read as follows:


Sec.  2.66  Revival of applications abandoned in full or in part due to 
unintentional delay.

    (a) Deadline. The applicant may file a petition to revive an 
application abandoned in full or in part because the applicant did not 
timely respond to an Office action or notice of allowance, if the delay 
was unintentional. The applicant must file the petition by not later 
than:
    (1) Two months after the issue date of the notice of abandonment in 
full or in part; or
    (2) 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 
in full or in part, where the applicant declares under Sec.  2.20 or 28 
U.S.C. 1746 that it did not receive the notice of abandonment.
    (b) Petition to Revive Application Abandoned in Full or in Part for 
Failure to Respond to an Office Action. A petition to revive an 
application abandoned in full or in part because the applicant did not 
timely respond to an Office action must include:
    (1) The petition fee required by Sec.  2.6;
    (2) A statement, signed by someone with firsthand knowledge of the 
facts, that the delay in filing the response on or before the due date 
was unintentional; and
    (3) A response to the Office action, signed pursuant to Sec.  
2.193(e)(2), or a statement that the applicant did not receive the 
Office action. The applicant may only assert once that the 
unintentional delay is based on non-receipt of the same Office action. 
When the abandonment is after a final Office action, the response is 
treated as a request for reconsideration under Sec.  2.63(b)(3) and the 
applicant must also file:
    (i) A notice of appeal to the Trademark Trial and Appeal Board 
under Sec.  2.141 or a petition to the Director under Sec.  2.146, if 
permitted by Sec.  2.63(b)(2)(iii); or
    (ii) A statement that no appeal or petition is being filed from the 
final refusal(s) or requirement(s).
    (c) Petition to Revive Application Abandoned for Failure to Respond 
to a Notice of Allowance. A petition to revive an application abandoned 
because the applicant did not timely respond to a notice of allowance 
must include:
    (1) The petition fee required by Sec.  2.6;
    (2) A statement, signed by someone with firsthand knowledge of the 
facts, that the delay in filing the statement of use (or request for 
extension of time to file a statement of use) on or before the due date 
was unintentional; and one of the following:
    (i) A statement of use under Sec.  2.88, signed pursuant to Sec.  
2.193(e)(1), and the required fees for the number of requests for 
extensions of time to file a statement of use that the applicant should 
have filed under Sec.  2.89 if the application had never been 
abandoned;
    (ii) A request for an extension of time to file a statement of use 
under Sec.  2.89, signed pursuant to Sec.  2.193(e)(1), and the 
required fees for the number of requests for extensions of time to file 
a statement of use that the applicant should have filed under Sec.  
2.89 if the application had never been abandoned;
    (iii) A statement that the applicant did not receive the notice of 
allowance and a request to cancel said notice and issue a new notice. 
The applicant may only assert once that the unintentional delay is 
based on non-receipt of the notice of allowance; or
    (iv) In a multiple-basis application, an amendment, signed pursuant 
to Sec.  2.193(e)(2), deleting the section 1(b) basis and seeking 
registration based on section 1(a) and/or section 44(e) of the Act.
    (3) The applicant must file any further requests for extensions of 
time to file a statement of use under Sec.  2.89 that become due while 
the petition is pending, or file a statement of use under Sec.  2.88.
    (d) Statement of Use or Petition to Substitute a Basis May Not Be 
Filed More Than 36 Months After Issuance of the Notice of Allowance. In 
an application under section 1(b) of the Act, the Director will not 
grant a petition under this section if doing so would permit an 
applicant to file a statement of use, or a petition under Sec.  2.35(b) 
to substitute a basis, more than 36 months after the issue date of the 
notice of allowance under section 13(b)(2) of the Act.
    (e) Request for Reconsideration. If the Director denies a petition 
to revive under this section, the applicant may request 
reconsideration, if:
    (1) The applicant files the request by not later than:
    (i) Two months after the issue date of the decision denying the 
petition; or
    (ii) 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 Sec.  2.20 or 28 
U.S.C. 1746 that it did not receive the decision; and
    (2) The applicant pays a second petition fee under Sec.  2.6.
0
4. Revise Sec.  2.146 to read as follows:


Sec.  2.146  Petitions to the Director.

    (a) Petition may be taken to the Director:
    (1) From any repeated or final formal requirement of the examiner 
in the ex parte prosecution of an application if permitted by Sec.  
2.63(a) and (b);
    (2) In any case for which the Act of 1946, or Title 35 of the 
United States Code, or this Part of Title 37 of the Code of Federal 
Regulations specifies that the matter is to be determined directly or 
reviewed by the Director;
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances;
    (4) In any case not specifically defined and provided for by this 
Part of Title 37 of the Code of Federal Regulations; or
    (5) In an extraordinary situation, when justice requires and no 
other party is injured thereby, to request a suspension or waiver of 
any requirement of the rules not being a requirement of the Act of 
1946.
    (b) Questions of substance arising during the ex parte prosecution 
of applications, including, but not limited to, questions arising under 
sections 2, 3, 4, 5, 6, and 23 of the Act of 1946, are not appropriate 
subject matter for petitions to the Director.
    (c) Every petition to the Director shall include a statement of the 
facts relevant to the petition, the points to be reviewed, the action 
or relief requested, and the fee required by Sec.  2.6. Any brief in 
support of the petition shall be embodied in or accompany the petition. 
The petition must be signed by the petitioner, someone with legal 
authority to bind the petitioner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice 
under Sec.  11.14 of this chapter, in accordance with the requirements 
of Sec.  2.193(e)(5). When facts are to be

[[Page 75005]]

proved on petition, the petitioner must submit proof in the form of 
verified statements signed by someone with firsthand knowledge of the 
facts to be proved, and any exhibits.
    (d) Unless a different deadline is specified elsewhere in this 
chapter, a petition under this section must be filed by not later than:
    (1) Two months after the issue date of the action, or date of 
receipt of the filing, from which relief is requested; or
    (2) Where the applicant or registrant declares under Sec.  2.20 or 
28 U.S.C. 1746 that it did not receive the action or no action was 
issued, the petition must be filed by not later than:
    (i) Two months of actual knowledge of the abandonment of an 
application and not later than six months after the date the trademark 
electronic records system indicates that the application is abandoned 
in full or in part;
    (ii) Two months after the date of actual knowledge of the 
cancellation/expiration of a registration and not later than six months 
after the date the trademark electronic records system indicates that 
the registration is cancelled/expired; or
    (iii) Two months after the date of actual knowledge of the denial 
of certification of an international application under Sec.  7.13(b) 
and not later than six months after the trademark electronic records 
system indicates that certification is denied.
    (e)(1) A petition from the grant or denial of a request for an 
extension of time to file a notice of opposition must be filed by not 
later than fifteen days after the issue date of the grant or denial of 
the request. A petition from the grant of a request must be served on 
the attorney or other authorized representative of the potential 
opposer, if any, or on the potential opposer. A petition from the 
denial of a request must be served on the attorney or other authorized 
representative of the applicant, if any, or on the applicant. Proof of 
service of the petition must be made as provided by Sec.  2.119. The 
potential opposer or the applicant, as the case may be, may file a 
response by not later than fifteen days after the date of service of 
the petition and must serve a copy of the response on the petitioner, 
with proof of service as provided by Sec.  2.119. No further document 
relating to the petition may be filed.
    (2) A petition from an interlocutory order of the Trademark Trial 
and Appeal Board must be filed by not later than thirty days after the 
issue date of the order from which relief is requested. Any brief in 
response to the petition must be filed, with any supporting exhibits, 
by not later than fifteen days after the date of service of the 
petition. Petitions and responses to petitions, and any documents 
accompanying a petition or response under this subsection, must be 
served on every adverse party pursuant to Sec.  2.119.
    (f) An oral hearing will not be held on a petition except when 
considered necessary by the Director.
    (g) The mere filing of a petition to the Director will not act as a 
stay in any appeal or inter partes proceeding that is pending before 
the Trademark Trial and Appeal Board, nor stay the period for replying 
to an Office action in an application, except when a stay is 
specifically requested and is granted or when Sec. Sec.  2.63(a) and 
(b) and 2.65(a) are applicable to an ex parte application.
    (h) Authority to act on petitions, or on any petition, may be 
delegated by the Director.
    (i) If the Director denies a petition, the petitioner may request 
reconsideration, if:
    (1) The petitioner files the request by not later than:
    (i) Two months after the issue date of the decision denying the 
petition; or
    (ii) 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 petitioner declares under Sec.  2.20 or 28 
U.S.C. 1746 that it did not receive the decision; and
    (2) The petitioner pays a second petition fee under Sec.  2.6.

    Dated: October 21, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-26035 Filed 10-27-16; 8:45 am]
 BILLING CODE 3510-16-P