Petition to Director Granted

UNITED STATES PATENT AND TRADEMARK OFFICE

PETITION TO DIRECTOR GRANTED

Carter Cynthia Granville Madlyn Ryan Foundation (petitioner) has petitioned the Director of the United States Patent and Trademark Office (Director) to reinstate the above-identified registration and to accept a late response to a Post Registration Office action.  The Director has authority to review the request.  37 C.F.R. §§2.146 and 2.165.  The petition is granted.

FACTS

On July 19, 2005, the United States Patent and Trademark Office (USPTO) issued the above identified registration.  On July 17, 2015, petitioner timely filed a combined Trademark Act Section 8 affidavit or declaration of use or excusable nonuse and Section 9 renewal application (combined filing).  15 U.S.C. §§1058(a), 1059(a).  In an Office action dated August 10, 2015,^[1] the Post Registration examiner refused the combined filing because there was a discrepancy between the party who filed the combined filing and the party listed as the owner of the registration in the USPTO records.  Further, the Post Registration examiner notified petitioner that a response must be filed within six months of the issuance date of the Office action to avoid cancellation and expiration of the registration.  The USPTO did not receive a response on or before February 10, 2016, and the grace period under Sections 8(a)(3) and 9(a) had expired.  The registration was cancelled and expired on July 25, 2016. 

Petitioner filed this petition on September 20, 2016.[2]  The petition included a declaration in which petitioner attested to the fact that “we received a notice” from the Post Registration examiner, but “had been diagnosed with a devastating medical condition … [and] had begun to address the correction needed, and learned we were two days too late, so we were unable to complete it.”  Petitioner also submitted a response to the ownership discrepancy stating that the registration owner of record, Carter Cynthia Granville Madlyn Ryan Foundation, a Michigan non-profit corporation, and the owner in the combined filing, Carter Cynthia Granville Madlyn Ryan Foundation, a Michigan charitable, non-profit corporation, “are the same” because “[w]e are a charity so the 2 are the same so nothing is wrong.”  (Petition). 

DISCUSSION

When a Section 8 affidavit is filed but deemed unacceptable, the USPTO will issue a notice stating the reasons for refusal.  See 15 U.S.C. §1058(e); 37 C.F.R. §2.163; TMEP §1604.15.  The registrant must file a response to the refusal within six months of the issuance date of the Office action, or before the end of the filing period set forth in Section 8(a), whichever is later.  37 C.F.R. §2.163(b); TMEP §1604.16.  If no response is filed within this time period, the registration will be cancelled, unless time remains in the grace period under Section 8(a)(3).  37 C.F.R. §2.163(c); TMEP §1604.16. 

Similarly, when a Section 9 renewal application is filed but deemed unacceptable, the USPTO will issue a notice stating the reasons for refusal.  See 15 U.S.C. §1059(b); 37 C.F.R. §2.184(a); TMEP §1606.11.  The registrant must file a response to the refusal of renewal within six months of the issuance date of the Office action, or before the expiration date of the registration, whichever is later.  37 C.F.R. §2.184(b)(1); TMEP §1606.12.  If no response is filed within this time period, the registration will expire, unless time remains in the grace period under Section 9(a).  37 C.F.R. §2.184(b)(1); TMEP §1606.12.

Petitioner did not file a response to the August 10, 2015 Office action within the six-month response period and the grace period under Sections 8(a)(3) and 9(a) had expired.  Accordingly, the USPTO properly cancelled the registration under Section 8 and declared the registration expired under Section 9. 

Waiver of Rules

The Director may waive Trademark Rules 2.163(b) and 2.184(b)(1) “in an extraordinary situation, when justice requires and no other party is injured.”  37 C.F.R. §§2.146(a)(5), 2.148, 2.163(b), 2.184(b)(1); see TMEP §1708.  To waive these rules, the Director must determine that all three conditions are satisfied.  See TMEP §1708. 

In this case, the Director finds that a waiver of Rule 2.163(b) is not appropriate because petitioner’s explanation that its failure to timely respond to the Office action was due to its President, Carter Ryan, and Secretary, Diane Hursh, suffering from serious medical conditions, does not establish an extraordinary circumstance, in which the Director can conclude that no other party will be injured and justice requires a waiver of this rule.  See TMEP §§1604.16, 1708.  Misunderstanding or lack of awareness of the requirements of the Trademark Rules of Practice is not 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).  

Supervisory Authority

However, under Trademark Act Section 2 and Trademark Rule 2.146(a)(3), the Director may exercise supervisory authority on petition in appropriate circumstances. The facts here support the invocation of supervisory authority.  In this case, petitioner contacted the USPTO to address the ownership discrepancy and/or initiate reinstatement proceedings with informal email and telephone communications.[3]  Further, the petition included petitioner’s response to the Office action by clarifying the ownership discrepancy; namely, that the owner of the registration and the owner identified in the combined filing “are the same” entity, notwithstanding the insertion of the term, “charitable,” to the entity field of the combined filing.  

DECISION

The petition is granted.  The USPTO will reinstate the above-identified registration.  The registration will then be forwarded to the Post Registration Division to review the response submitted with the petition.

/kellychoe/

Kelly A Choe

Attorney Advisor

Office of the Deputy Commissioner

 for Trademark Examination Policy

tel: 571. 272.9429

For general and other useful information about trademarks, you are encouraged to visit the USPTO web site at http://www.gov.uspto.report/main/trademarks.htm.