Petition to Director Granted

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR GRANTED

Issue date:  December 16, 2021

Carbon 38, Inc. (petitioner) has petitioned the Director of the United States Patent and Trademark Office (USPTO) to reinstate the above-identified registration and to accept a late response to an outstanding Post Registration Office action.  The Director has the authority to review this request under 37 C.F.R. §§2.146(a)(5), 2.148, and has delegated this matter to the Commissioner for Trademarks and the staff of the Office of the Deputy Commissioner for Trademark Examination Policy. 35 U.S.C. §3(a)-(b); 37 C.F.R. §2.146(h).  The petition is granted.

FACTS

On April 3, 2020, petitioner filed a Trademark Act Section 8 declaration of use or excusable nonuse (Section 8 declaration). 15 U.S.C. §1058. In three duplicate Office actions dated April 23, 2020, the Post Registration examiner notified petitioner that its Section 8 declaration was acceptable. However, petitioner was further notified the registration was randomly selected for the Post Registration Proof of Use Audit Program (Audit Program) to determine whether the mark is in use with all goods identified in the registration. Petitioner was advised that as part of the Audit Program, proof of use for two additional goods from International Class 25 was required. Specifically, petitioner was advised it must submit proof of use for:

·         leggings, and

·         shoes.

Petitioner was also notified if the response did not meet the requirements of the Audit Program, or if there was a request to delete any of the goods identified for audit while other goods remained in the registration without acceptable proof of use of record, then a second Office action would issue requiring proof of use for all of the remaining goods in the registration for which proof of use was not of record. The USPTO did not receive a response on or before the expiration of the grace period under Section 8(a)(3), which expired on February 26, 2021. The registration was cancelled on April 28, 2021.

Petitioner filed this timely petition on April 29, 2021.  The petition includes a declaration in which petitioner’s counsel attests to the fact she never received the Office actions dated April 23, 2020. (Petition.) Additionally, the petition includes verified proofs of use for the goods “leggings” and “shoes” that appear to be acceptable.

DISCUSSION

When a Section 8 declaration 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; Trademark Manual of Examining Procedure (TMEP) §1604.15.  The registrant must file a response to the refusal within six months of the issue 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. 

Petitioner did not file a response to the April 23, 2020 Office actions within the six-month response period and the grace period under Section 8(a)(3) had expired.  Accordingly, the USPTO properly cancelled the registration under Section 8.  Petitioner’s counsel, however, has provided evidence in the form of a declaration that she did not receive the April 23, 2020 Office actions.

The Director may waive Trademark Rule 2.163(b) “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); see TMEP §1708.  To waive this rule, 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 appropriate.  Petitioner’s counsel’s evidence showing she did not receive the April 23, 2020 Office actions establishes 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.  Based on this evidence, petitioner could not have responded to the April 23, 2020 Office actions within six months of the issue date.

Accordingly, the Director waives Rule 2.163(b) and permits petitioner to submit a late response to the April 23, 2020 Office actions.  See 37 C.F.R. §§2.146(a)(5), 2.148.

DECISION

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

/Allison P. Schrody/

Attorney Advisor

Office of the Deputy Commissioner

 for Trademark Examination Policy

allison.schrody@uspto.gov

(571) 272-5893