Petition to Director Denied

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR DENIED

Issue date:  August 16, 2019

The request for special handling of the above-identified trademark application was received on August 13, 2019.

A request for special handling is granted only for new applications that are identical to a previously owned registration that was cancelled or expired for inadvertently failing to file an acceptable Section 8 Affidavit or Section 9 Renewal Application.  TMEP §§702.02 and 1710. 

Although the marks in the prior registration and the present application are the same, the goods/services in the new application go beyond the scope of the goods/services listed in the cancelled registration. A Request for Special Handling is only granted when the marks and the goods/services in the cancelled registration and the new application are legally identical.

The justification for granting special status to new applications is that since they are virtually identical to the recently cancelled registration, the search and examination performed by the Office will be relatively problem-free and a replacement registration should be issued as soon as possible. However, when there is a significant difference in either of the two elements - the marks or the goods and services - a more extensive search and examination must take place and any registration that may issue would not be merely a replacement for the cancelled registration.

Decision:  Request for special handling is hereby DENIED.

The application will be processed in the order it was received.

The application will be forwarded for processing in the normal course of business.

Sincerely,

/Jolie Washington/

Paralegal Specialist

Office of the Deputy Commissioner

for Trademark Examination Policy

jolie.washington@uspto.gov

571-272-9583