Petition to Director Denied

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR DENIED

Issue date:  March 24, 2021

Dear Mr. Karplus:

A request for special handling of the above-identified trademark application was received on March 16, 2021.

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 declaration and/or Section 9 renewal application.  Trademark Manual of Examining Procedure (TMEP) §§702.02, 1710. 

Although the marks in the prior registration and the present application are the same, the goods and/or services in the new application are beyond the scope of the goods and/or services listed in the cancelled registration. A request for special handling is only granted when the marks in the cancelled registration and the new application are legally identical and the goods and/or services in the new application are identical to, or narrower than, the goods and/or services in the cancelled registration.

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 United States Patent and Trademark Office (USPTO) 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/or services - a more extensive search and examination must take place, and any registration that may issue would not be a mere replacement for the cancelled registration.

The request for special handling is hereby denied.

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

/Theresa Harris/

Paralegal Specialist

Office of the Deputy Commissioner

For Trademark Examination Policy

(571) 272-8367

Theresa.Harris@uspto.gov