[E-trademarks] Petition to Director to Revive Registration?

Mon Nov 4 18:03:20 UTC 2024

Assuming you cannot get the reg. revived, know that you can file a request (not a petition) to make the replacement application “special” and jump the queue.  See TMEP Sec. 1710.  The one time I did this for a pro bono client, at the height of PTO delays in 2023, the application was examined within three months, and registered in a little over 6.

Susan L. Crane
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Monday, November 4, 2024 12:36 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>
Subject: Re: [E-trademarks] Petition to Director to Revive Registration?

Lindsey: My understanding was that revival after cancellation where the owner received the office action is virtually impossible. There isn’t any form I’m aware of except the standard petition to the Director, but as Kevin noted, the standard
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Lindsey:

My understanding was that revival after cancellation where the owner received the office action is virtually impossible. There isn’t any form I’m aware of except the standard petition to the Director, but as Kevin noted, the standard is really really high and hard to meet. Basically, the office’s view is that no matter what string of events led to failure to respond, owners have six whole months to respond and should be looking at PTO communications when they come in and not at the last minute.

Decisions like this always sound like a professor who has been presented with a request for extension to turn in a paper the student had a month to write.

John, thanks so much for that reference. Even though the rules are really vague about what “extraordinary circumstances” are, I see the denial enunciates a three part test:  “in an extraordinary situation, when justice requires and no other party is injured”. So then it’s about what an “extraordinary situation is” (assuming the other two points are satisfied – that second prong sounds like an equitable situation where cancellation of the reg would be unconscionable or similar). If I recall correctly, “extraordinary circumstances” usually involves hurricanes, sudden death of a critical person, volcanoes,  things like that.

Frustratingly difficult to meet.

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Kevin Grierson via E-trademarks
Sent: Monday, November 4, 2024 7:28 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Kevin Grierson <kgrierson at cm.law<mailto:kgrierson at cm.law>>
Subject: Re: [E-trademarks] Petition to Director to Revive Registration?

EXTERNAL EMAIL
See TMEP 1712.02(b).  The registrant has two months from the date of actual knowledge of the cancellation for file a petition to reinstate the cancelled registration.  I note, however, that a successful petition requires an “extraordinary situation.”  “Extraordinary Situation” is discussed in 1709.03 (without much detail).

HTH,

Kevin
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Lindsey Corbin via E-trademarks
Sent: Sunday, November 3, 2024 10:30 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Lindsey Corbin <lindsey.corbin at delegate.legal<mailto:lindsey.corbin at delegate.legal>>
Subject: [E-trademarks] Petition to Director to Revive Registration?

EXTERNAL EMAIL
Hi friends --

We have a situation where a Post Reg OA was issued, handled accordingly, but the fee was missed -- A second Post Reg OA was issued, requesting the $100 fee, but it was missed and now a Notice of Cancellation has been received for the registration.

Can anyone point me to a Petition to the Director (paying $250) to successfully pay the $100 fee and have the registration reinstated?  I've been reviewing the Petitions website but thought someone here may have direct experience or can point me to a specific case.

Thanks!

--
Lindsey Corbin
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