Petition to Director Granted

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR GRANTED

Issue date:  September 18, 2020

Bunny Ears, LLC (petitioner) has petitioned the Director of the United States Patent and Trademark Office (USPTO) to reverse the trademark examining attorney’s abandonment of the above-identified application for failure to file a complete response to an Office action.  The Director has the authority to review petitioner’s request.  See 37 C.F.R. §2.146(a)(3).  The petition is granted.

FACTS

On January 16, 2019, the examining attorney issued a nonfinal Office action.  Petitioner filed a response to the Office action on July 16, 2019 signed by James E. Rosini, Esq.  The examining attorney issued a notice of incomplete response on July 24, 2019 because petitioner’s response did not appear to have been signed by a proper party.  In the notice, petitioner was provided thirty days from the date the notice of incomplete response issued or the time remaining in the sixth-month period to respond to the previous Office action, whichever was longer, to submit a response properly signed by petitioner’s current attorney of record or to file a revocation or power of attorney signed by petitioner and then resubmit a response properly signed by the new attorney. 

On August 5, 2019, a revocation and appointment of attorney was filed, revoking the power of original attorney Neil J. Rosini and appointing James E. Rosini, Esq. as the attorney of record.  The revocation was signed by Stewart P. Miller as “Authorized signatory.”

No properly signed response was received on or before August 24, 2020.[1]  On February 4, 2020, the examining attorney held the application abandoned because petitioner failed to file a complete response to the January 16, 2019 nonfinal Office action. 

On April 6, 2020, petitioner filed this petition requesting reversal of the holding of abandonment in the above-identified application.  With the petition, petitioner resubmitted the response originally submitted on July 16, 2019 and the revocation and appointment of attorney submitted on August 5, 2019.  On September 16, 2020, in response to a petition inquiry letter, petitioner filed a change address or respresentation form signed by Stewart P. Miller as “CFO” appointing James E. Rosini, Esq. as the attorney of record.   

DISCUSSION

On petition, the Director may exercise supervisory authority in appropriate circumstances.  35 U.S.C. §2; 37 C.F.R. §2.146(a)(3).  In such circumstances, the Director may review the actions of an examining attorney for clear error or an abuse of discretion.  In re GTE Educ. Servs., 34 USPQ2d 1478, 1479–80 (Comm’r Pats. 1994); In re Direct Access Commc’ns (M.C.G.) Inc., 30 USPQ2d 1393, 1394 (Comm’r Pats. 1993); Trademark Manual of Examining Procedure (TMEP) §§1706, 1707.  However, even where there has been no clear error or an abuse of discretion, the Director may exercise supervisory authority if a petitioner can show that it has substantially complied with the requirements of the statute or rules. See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013); In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992); TMEP §1707.

Pursuant to the Trademark Rules, if an examining attorney grants an applicant additional time to complete a response that appears to have been improperly signed and the applicant fails to respond within the time granted or remaining in the sixth-month response period, the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §§715.03(a)(ii)(E), 718.03, 718.03(b).  If the applicant wishes to submit evidence that an authorized party in fact signed the original response, the applicant may petition the Director to reverse this holding and reinstate on petition the application under Trademark Rule 2.146(a)(3).  37 C.F.R. §2.146(a)(3); TMEP §1713.02.  The Director will grant the petition and instruct the examining attorney to review the response if the evidence establishes that a proper party signed the response.  TMEP §1713.02.

Based on petitioner’s evidence, the Director finds that the July 16, 2019 response was signed by a proper party.  See 37 C.F.R. §2.146(a)(3); TMEP §1713.02.

DECISION

The petition is granted.  The above-identified application is reinstated on petition and the application will be forwarded to the examining attorney to examine the response submitted on July 16, 2019 and resubmitted with the petition. 

/Sara Benjamin/

Attorney Advisor

Office of the Deputy Commissioner

  for Trademark Examination Policy

sara.benjamin@uspto.gov

571.272.8847