any registration to be amended. . . The Office does not limit the permissible amendments to changes in the mark, but permits amendment to be made of various other parts of the registration also.

Amendments may be made to the identification of goods or services in a registration to restrict the identification or otherwise to change it in ways that would not require republication of the mark. For example, goods or services within a class may be deleted or terminology may be modernized. However, goods or services may not be added to a registration by amendment. See 37 C.F.R. §2.173. Changed circumstances (e.g., new technology) will not render acceptable an amendment which is not otherwise permissible.

In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire class constitutes a surrender of the registration for cancellation as to the class deleted. See 37 C.F.R. §2.172.

Any registered mark may be disclaimed in part. However, no amendment seeking the elimination of a disclaimer will be permitted. 37 C.F.R. §2.173(b).

A registration which is amended must still contain registrable matter and the mark as amended must be registrable as a whole. The amendment or disclaimer must not involve such changes in the registration as to alter materially the character of the mark. 37 C.F.R. §2.173(a).

Amendments are approved or disapproved by the Post Registration Section of the Office of Trademark Services.

A fee for amendment is provided for by the Trademark Act. 15 U.S.C. §1057(e). See 37 C.F.R. §§2.6 and 2.173(a).

Amendment is made by attaching to the certificate of registration (which the registrant should submit), and to the printed copies of the registration in the Office, a printed certificate setting forth the amendment. If the original certificate of registration is lost or destroyed, the registrant must furnish a certified copy of the registration. A certified copy showing title may be obtained from the Office for a fee.

1607.04 Correction of Mistake in Registration

The Office does not itself initiate the correction of mistakes in registrations, but the Office may make correction if the registrant calls the mistake to the attention of the Office and asks for correction.

If there is mistake which occurred through the fault of the Office, a certificate of correction will be issued without fee. 15 U.S.C. §1057(g); 37 C.F.R. §2.174. In some cases (ie., publication in the Official Gazette was insufficient because of the error), the registration may have to be withdrawn and the mark republished.

If the mistake occurred through the fault of the applicant (now the registrant), it should be shown that the mistake occurred in good faith. The Trademark Act provides for a fee for correction due to the applicant's (registrant's) mistake. Correction cannot be made if the changes are such as would require republication of the mark. 15 U.S.C. §1057(h); 37 C.F.R. §2.175. See TMEP $1607.02(a).

These requests are handled by the Post Registration Section of the Office of Trademark Services. A request will generally be granted provided that the correction does not involve such changes in the registration as would require republication of the mark.

Amendment or correction is made by attaching to the certificate of registration (which the registrant should submit), and to the printed copies of the registration in the Office, a printed certificate setting forth the amendment or correction. If the original certificate of registration is lost or destroyed, the registrant must so state and furnish a certified copy of the registration on which the correction can be made. A certified copy showing title may be obtained from the Office for a fee.

The Commissioner may issue a certificate of correction or, in his or her discretion, a new certificate of registration upon payment of the prescribed fee. See In re Pamex Foods, Inc., 209 USPQ 275, 277-78 (Comm'r Pats. 1980). If, in connection with mistake by the registrant, the registrant wishes a new certificate of registration to be issued and the Commissioner exercises his or her discretion to order issuance of a new certificate of registration rather than a certificate of correction or notice of amendment, a fee is required. See 15 U.S.C. $1057(h); 37 C.F.R. §2.6.

1701 Statutory Authority of Commissioner

Section 6(a) of Title 35 of the United States Code authorizes the Commissioner, subject to the approval of the Secretary of Commerce, to establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office. For the statutory language, see TMEP Chapter 1900.

The Commissioner's authority to review and supervise the work of the Office is primarily exercised by the promulgation of the Rules of Practice; the issuance of orders, notices and memoranda stating Office policies and methods for effectuating these policies; and decisions on petitions to the Commissioner. This chapter will deal with the latter item.

For trademark matters, in regard to action designated to be taken by or to the Commissioner, "Commissioner" normally means the Assistant Commissioner for Trademarks. The duties of the Assistant Commissioner include overseeing the staff and operations of the Patent and Trademark Office with regard to trademarks.

1702

Petitionable Matter under 37 C.F.R. §2.146

The primary rule concerning petitions to the Commissioner is Trademark Rule 2.146, 37 C.F.R. §2.146. Rule 2.146(a), 37 C.F.R. §2.146(a), sets forth the bases for filing a petition to the Commissioner, as follows:

Petition may be taken to the Commissioner: (1) From any repeated or final formal requirement of the examiner in the ex parte prosecution of an application if permitted by §2.63(b); (2) in any case for which the Act of 1946, or Title 35 of the United States Code, or this Part of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined directly or reviewed by the Commis

sioner; (3) to invoke the supervisory authority of the Commissioner in appropriate circumstances; (4) in any case not specifically defined and provided for by this Part of Title 37 of the Code of Federal Regulations; (5) in an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.

Rule 2.146(a)(1), 37 C.F.R. §2.146(a)(1), when read in conjunction with 37 C.F.R. §2.63(b), clearly limits a petition from a refusal by an examining attorney to one which has been repeated or made final. The petition must also conform with the requirements of 37 C.F.R. §2.146(b), which states:

(b) Questions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under sections 2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Commissioner.

Accordingly, only a procedural matter made be petitioned. Otherwise, the matter is more appropriately handled on appeal before the Trademark Trial and Appeal Board. Regarding matter which is appealable to the Board, see TMEP §1501.01; In re Hart, 199 USPQ 585 (Comm'r Pats. 1978); and In re Stenographic Machines, Inc., 199 USPQ 313 (Comm'r Pats. 1978).

If a petition under 37 C.F.R. §2.146(a)(1) is denied, the applicant has until six months from the date of the Office action which repeated the requirement or made it final, or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement. A formal requirement which is the subject of a petition decided by the Commissioner may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. §2.63(b).

Rule 2.146(a)(2), 37 C.F.R. §2.146(a)(2), incorporates the various other rules which specifically mention the authority of the Commissioner to decide a matter. See TMEP $1704.

Rule 2.146(a)(3), 37 C.F.R. §2.146(a)(3), provides for authority of the Commissioner to review and supervise, in general, the work of the Office, especially as represented in the rules and practice. Decisions on the rules and practice are specifically outside the province of the Trademark Trial and Appeal Board or courts. There are many decisions made in the examining process ex parte

which are discretionary, procedural or nonsubstantive in nature. Petition provides an opportunity for consideration of these matters when it is believed that an incorrect or unreasonable position has been taken which should be further evaluated from a supervisory standpoint, in the interests of consistency and justice. However, the

Commissioner will reverse the action of an examiner only where there has been a clear error or abuse of discretion. In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm'r Pats. 1974); Ex parte Peerless Confection Co., 142 USPQ 278 (Comm'r Pats. 1964).

In some cases, the Commissioner will invoke his or her supervisory authority when it is apparent that Office practice should be changed to construe the action of the petitioner as one that is essentially in compliance with the rules. See In re Conservation Technology Inc., 25 USPQ2d 1079 (Comm'r Pats. 1992); In re ScheringPlough Healthcare Products, Inc., 24 USPQ2d 1709 (Comm'r Pats. 1992).

For any situation not covered by the rules in which a party believes it is entitled to some redress, petition may be taken to the Commissioner under 37 C.F.R. §2.146(a)(4).

Rule 2.146(a)(5), 37 C.F.R. §2.146(a)(5), provides authority for the Commissioner to suspend or waive any requirement of the rules which is not a requirement of the statute, in an extraordinary circumstance, when no other party is injured and justice requires. Extraordinary circumstances have been found in certain cases involving non-receipt of an Office action. On the other hand, an oversight that could have been prevented by the exercise of ordinary care or diligence is not an extraordinary situation. See In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm’r Pats. 1990); In re Choay S.A., 16 USPQ2d 1461 (Comm'r Pats. 1990); In re Bird & Son, Inc., 195 USPQ 586 (Comm'r Pats. 1977).

1703 Specific Types of Petitions

The following is a list of the most common issues which come before the Office of the Assistant Commissioner on petition:

Petitions to Restore an Application Filing Date are occasioned by the return of application papers which the Office determined did not meet the minimum filing requirements.

Petitions to Make Special, that is, to advance applications out of their normal order of examination, are not covered by specific rule, but practice permits them under 37 C.F.R. §2.146. See TMEP $1102.04.

Petitions to Revive an Abandoned Application may be handled under either Rule 2.66 or Rule 2.146, 37 C.F.R. §§2.66 or 2.146. Petitions under Rule 2.66 to revive an application abandoned for failure to timely respond to an outstanding Office action are reviewed on the standard of unavoidable delay. Petitions under Rule 2.146 to revive an application abandoned because the examining attorney determined that the response to the outstanding Office action was an incomplete response are reviewed under 37 C.F.R. §2.146(a)(3). In order to reverse the action of the examining attorney, the Assistant Commissioner must find clear error or abuse of discretion.

Petitions to Restore Jurisdiction to the Examining Attorney may be filed by the applicant under Rule 2.84, 37 C.F.R. §2.84, in cases where the applicant wishes the examining attorney to consider an amendment or other matter when jurisdiction is not with the examining attorney.

Petitions to Overrule the Examining Attorney, under 37 C.F.R. §2.146(a)(3), must convince the Assistant Commissioner that the examining attorney committed clear error or abused his or her discretion.

Petitions to Review the Action of the ITU/ Divisional Unit are reviewable under 37 C.F.R. $2.146(a)(3). The Assistant Commissioner may find clear error or abuse of discretion by the ITU/Divisional Unit or may exercise his or her supervisory authority to determine that a statement of use or request for extension of time to file a statement of use is essentially in compliance with the rules. See In re Conservation Technology Inc., 25 USPQ2d 1079 (Comm'r Pats. 1992); In re Schering-Plough Healthcare Products, Inc., 24 USPQ2d 1709 (Comm'r Pats. 1992).

Petitions to Review the Action of the Post Registration Examiner may be filed in cases where an affidavit of use or excusable nonuse has been rejected under 15 U.S.C. §1058, a renewal application has been rejected under 15 U.S.C. $1059, or an amendment has been refused under 15 U.S.C. §1057. See 37 C.F.R. §§2.165, 2.184 and 2.176; TMEP §§1603.13(a), 1605.11(a) and

1607.02.

Petitions to Record Documents Rejected by the Assignment Branch are handled by the Assistant Commissioner, under Rule 3.11, 37 C.F.R. §3.11.

Petitions to Declare an Interference are provided for under Rule 2.91, 37 C.F.R. §2.91. See TMEP §§1208.04 and 1507.

Petitions to Reverse a Non-Final Decision of the Trademark Trial and Appeal Board are reviewable under the standard of clear error or abuse of discretion. Riko Enterprises, Inc. v. Lindsley, 198 USPQ 480 (Comm'r Pats. 1977).

Petitions to Review a Decision to Deny or Grant an Extension of Time to Oppose are reviewed by the Assistant Commissioner for a determination of whether the Board correctly applied 37 C.F.R. §§2.101 and 2.102.

Regarding petitions to cancel registrations, which are filed with the Trademark Trial and Appeal Board, see TMEP $1606.

If a petition is submitted to another section of the Office, it should be forwarded, along with the file, to the Office of the Assistant Commissioner or other official, as appropriate. See TMEP $1705 regarding the delegation of the Commissioner's authority to such officials.

1704 Filing the Petition

A petition to the Commissioner should include a statement indicating the authority of the Commissioner to act, the relevant facts, the points to be reviewed, the requested action or relief and the fee. The petition should be accompanied by any supporting brief and, in an ex parte case, any evidence to be considered. When facts are to be proved, proof in the form of affidavits or declarations in accordance with 37 C.F.R. §2.20 should accompany the petition. See 37 C.F.R. §§2.6 and 2.146(c).

In order to file a petition to the Commissioner, a person must have standing in a case before the Office in some capacity according to proper procedure. See Ex parte Lasek, 115 USPQ 145 (Comm'r Pats. 1957). Petitions by third parties to review actions taken in an ex parte matter are generally denied; there is no provision in the Trademark Act or Rules of Practice for intercession by a third party who claims to be injured by the Office's action in an ex parte matter.

A petition to the Commissioner must be timely, unless an extraordinary circumstance can be shown. In most cases, deadlines for filing petitions are expressly provided for in the rules. The following petition deadlines run from the date of mailing of the action or order of which the petitioner seeks review:

Providing a catchall deadline, Rule 2.146(d), 37 C.F.R. §2.146(d), states as follows:

A petition on any matter not otherwise specifically provided for shall be filed within sixty days from the date of mailing of the action from which relief is requested.

Filings which include certificates of mailing in compliance with 37 C.F.R. §§1.8 and 1.10 will be considered timely if mailed by the due date. Facsimile transmission is also available.

Trademark applicants and registrants are responsible for monitoring the status of their applications or registrations in cases where a notice or action from the Patent and Trademark Office is expected. For a party to be considered diligent, it should inquire about the status of the pending matter not later than six months after the filing or receipt of any document. Accordingly, even if the party can prove that a paper was filed with the Office, the petition may be denied if the petitioner did not monitor the status diligently. See TMEP §413 and notice at 1143 TMOG 73 (October 27, 1992).

Oral hearings will not be granted except when considered necessary by the Commissioner. See 37 C.F.R. $2.146(f).

After the decision has been rendered, a notation as to the decision is entered on the "Contents" section of the file wrapper. If necessary, the file is then forwarded to the appropriate Office personnel, who will act in accordance with the decision.

See Omelko, Petitions to the Commissioner: Avoiding Petition Pitfalls, 81 Trademark Rep. 95 (1991).

1705 Matters Delegated by Commissioner

The authority to decide certain types of petitions may be delegated to a specified official, but any authority not delegated is reserved to the Commissioner and may be delegated to appropriate officials on an ad hoc basis.

Requests to reinstate improperly abandoned applications are decided either by the Administrator for Trademark Classification and Practice or by the Office of Trademark Services, depending upon the nature of the request. See TMEP §1112.04(c).

(Note that a formal petition is not required in cases

where the applicant or registrant has proof that a response or required paper or fee was timely filed. Proof can be in the form of an acknowledgment postcard with a Patent and Trademark Office Mail Room date stamp or a request in compliance with Rule 1.8(b), 37 C.F.R. §1.8(b), where permitted. In some cases, the actual timely-filed paper or fee is eventually associated with the file. Requests for reinstatement under these circumstances generally do not require a fee. However, a party must be diligent in monitoring the status of a pending matter. See TMEP §§413 and 1704.)