MISSING A DEADLINE ON FILING A RESPONSE IN TRADEMARK PRACTICE
Trademark law is a little more forgiving for disorganized procrastinators than other areas of law. This is a good thing.Â First, to qualify the glaring colloquialism, the Trademark Law refers to Title 15, Chapter 22 of the United States Code, otherwise known as the Lanham Act. The Lanham Act sets up rules and standards for examination and enforcement of trademarks. The act also authorizes the director of the Trademark Office to create rules of practice at the Trademark Office. These rules have been codified under Title 37 of the Code of Federal Regulations.
The Act provides that if a trademark is found not to be entitled to registration, the applicant will need to be notified. Once notified, the applicant is given a six months period to respond to the rejection with an amendment or an argument in favor of allowance. A rejection is generally referred to an Office Action, which may raise multiple trademark issues. Some of examples of possible rejections are: a competing registration, likelihood of causing consumer confusion, descriptiveness, etc. In a federal agency that is known for its revenue generating capabilities, the six months period permitted for a reply to an office action is shockingly free.
If no action is taken within the six months reply period, the trademark will be considered abandoned. But all is not lost. 37 CFR 2.66 offers a life preserver to the tardy, offering a near automatic revival in exchange for a fee along with a fully compliant response to the office action. The fee and response must be submitted within two months of the expiration of the 6 months deadline. The possibility to revive an application beyond the initial deadline period is available in many other trademark registration proceedings. Thus, if one fails to file proof of use or a request for an extension of time for proof of use by the six-month deadline after allowance of a trademark, the same revival procedure may be utilized to file the necessary submissions.
Even if the two-month grace period under 37 CFR 2.66 has expired, there is still a possibility of revival by petitioning the Director of the Trademark Office under 37 CFR 2.146. This is a relief of last resort and requires a petition that is both more expensive and more difficult to get, but it may be your last shot at preserving the filing date.