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Director of the USPTO Reverses Abandonment Refusals
Practical Law Legal Update 9-565-5805 (Approx. 3 pages)
Director of the USPTO Reverses Abandonment Refusals
by Practical Law Intellectual Property & Technology
| Published on 18 Apr 2014 • USA (National/Federal) |
In In re P.T. Polymindo Permata, the Director of the US Patent and Trademark Office (USPTO), citing the petitioner-applicant's substantial compliance with Rule 2.65(b), issued a precedential ruling reversing the examining attorney's refusals to grant the petitioner's requests for reconsideration of its trademark applications on grounds of abandonment.
On December 17, 2013, in In re P.T. Polymindo Permata, the Director of the USPTO issued a precedential ruling that granted the applicant's petitions to:
- Reverse the trademark examining attorney's holding that Permata had abandoned its trademark applications by failing to file complete responses to final Office actions.
- Accept the applicant's substitute specimens and supporting declarations.
After filing intent-to-use applications, the petitioner-applicant, P.T. Polymindo Permata submitted statements of use on January 25, 2012. On April 11, 2012, the examining attorney issued Office actions refusing Permata's specimens because they consisted of advertising material. Permata filed responses with different specimens on October 11, 2012. The examining attorney issued final Office actions on November 19, 2012, refusing these and all of Permata's other specimens of record because they included nothing more than advertising material. This final refusal triggered a six-month response period during which Permata could avoid abandonment if it either:
- Filed appeals to the Trademark Trial and Appeal Board (TTAB).
- Petitioned, if allowed under Trademark Rule 2.63(b)(2), to comply with the outstanding specimen-related requirements (37 C.F.R. § 2.63(b)(2)).
On May 16, 2013, Permata filed requests for reconsideration with substitute specimens consisting of packaging bearing the applied-for trademarks. However, Permata failed to include supporting declarations for these specimens as required by Rule 2.20 (37 C.F.R. § 2.20).
The examining attorney rejected Permata's requests for reconsideration for lack of the required supporting declarations and held the applications abandoned for Permata's failure to file a complete response to the November 19, 2012 final Office actions. Permata responded by filing petitions requesting reversal of the holdings of abandonment and included substitute specimens of the goods packaging and supportive declarations under Rule 2.20.
Ruling on Permata's petitions, the Director first noted that it found no clear error in the examiner's abandonment decision. However, despite this ruling, the Director exercised its supervisory authority under Trademark Rule 2.146(a)(3) to review the examining attorney's holdings and found that Permata's submission of acceptable substitute specimens with its requests for reconsideration:
- Would have obviated the examiner's refusal of Permata's specimens.
- Substantially complied with the examining attorney's requirements.
- Demonstrated a bona fide attempt to advance the examinations.
Based on these findings, the Director granted Permata's petitions to reverse the examiner's abandonment rulings and forwarded Permata's applications as amended by Permata's substitute specimens and supporting declarations for the examining attorney's continued examination.