1712.01 Reinstatement of Applications Abandoned Due to Office Error
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 formal petition to revive. 37 C.F.R §2.64(a) There is no fee for a request for reinstatement. To ensure proper routing and processing, the Office prefers that the request be filed electronically. In TEAS, the Request for Reinstatement form can be accessed by clicking on the link entitled "Petition Forms" at http://www.uspto.gov.
The following are examples of situations where the USPTO may reinstate an application that was held abandoned for failure to timely file a statement of use or response to an Office action or that was held abandoned in total after a partial refusal or requirement (see 37 C.F.R §2.64(a)(2) ):
- (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 TEAS, in the form of a copy of a TEAS "Success" page confirming receipt of the application ( see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
- (2) There is an image of the timely filed response, statement of use, or extension request in TICRS.
- (3) The timely filed document is found in the USPTO.
- (4) The applicant supplies a copy of the document and proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
- (5) The applicant supplies a copy of the document and proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of facsimile transmission requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
- (6) The applicant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the applicant specifically refers to the document at issue (see TMEP §303.02(c)).
- (7) The applicant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
- (8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The request for reinstatement must include an affidavit or declaration under 37 C.F.R. §2.20 that attests to the contents of the filing.
- (9) The USPTO sent an Office action or notice of allowance 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 or notice. See TMEP §609.03 regarding the applicant’s duty to notify the USPTO when the correspondence address changes.
- (10) An application is abandoned in full for failure to respond to an Office action or for an incomplete response to a final Office action when the Office action states that the refusal or requirement applies to only certain goods, services, and/or classes. See TMEP §718.02(a).
- (11) An application is abandoned in total after a refusal or requirement that applies to only certain goods, services, and/or classes is upheld on appeal or when the applicant withdraws or fails to prosecute an appeal of a refusal or requirement that applies to only certain goods, services, and/or classes to the Board. See TMEP §718.02(a).
The applicant must file a request for reinstatement by not later than two months after the issue date of the notice of abandonment. 37 C.F.R §2.64(a)(1)(i). If the applicant did not receive the notice of abandonment, the applicant must file the request by not later than 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. 37 C.F.R §2.64(a)(1)(ii). The request must also include a properly signed declaration under 37 C.F.R §2.20 or 28 U.S.C. §1746 stating that the applicant did not receive the notice of abandonment. Id.
When an application is reinstated, a computer-generated notice of reinstatement is sent to the correspondence address of record and the Trademark electronic records system is updated accordingly.
If the applicant is not entitled to reinstatement, a request for reinstatement may be considered as a petition to revive or a petition to the Director and must meet all the requirements of 37 C.F.R. §2.66 or 37 C.F.R §2.146. See TMEP §§1702–1708 and TMEP §§1714–1714.01(g).