TMEP 1708: Waiver of Rules

October 2017 Edition of the TMEP

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1708    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.  Extraordinary circumstances have also been found in certain cases where a petitioner avers by affidavit or declaration that it did not receive an Office action issued regarding a §8 affidavit, §71 affidavit, or §9 renewal application. See TMEP §§1604.16, 1606.12, 1613.16, 1712.02(b).

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., Inc., 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, 1622–1623 (Dir USPTO 2004) (holding that an applicant’s lack of knowledge of application filing fee increase not extraordinary situation); B & E Sales Co. Inc. v. Andrew Jergens Co., 7 USPQ2d 1906, 1907–1908 (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).

Mail delays are not considered extraordinary, because the Trademark Rules of Practice provide procedures designed to avoid lateness due to mail delay. In re Sportco, Inc., 209 USPQ 671, 672 (Comm’r Pats. 1980); In re Chicago Historical Antique Auto. Museum, Inc., 197 USPQ 289, 292 (Comm’r Pats. 1978).  See 37 C.F.R. §2.197 regarding certificates of mailing.

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 dismissed, as the Director lacks authority to grant such a petition.