Petition to the Director Oct 11th

[artistdraw]

What is the name of your state (only U.S. law)? New York

I have to file 2.146 Petition to the Director because I was sent final office action and was denied after my response. I spoke with the person who handled it she said I did not bring up any new information. Which I said I did and she noticed while I spoke to her. The new issue was that the mark is in the grace period for filing maintenance and will not be renewed. They have until October 17th I have until October 11 to file petition to the director.

She advised me to speak with an attorney advisor. I did and she told me to fill out petition form #3 and indicate that I filed a timely response to final office action. And in that response I requested the application be placed in suspend status since registrant was due to file maintenance documents and within grace period for filing such documents... She also included in the email that I should request a refund of the $100 petition fee. I was wondering if a refund is likely? Do you think its because of my case she requested? (The other trademark being in maintenance and not renewing and having me go through all of this) I emailed but will probably not get an answer before it is time to file this Tuesday.

 

[quincy]

What is the name of your state (only U.S. law)? New York

I have to file 2.146 Petition to the Director because I was sent final office action and was denied after my response. I spoke with the person who handled it she said I did not bring up any new information. Which I said I did and she noticed while I spoke to her. The new issue was that the mark is in the grace period for filing maintenance and will not be renewed. They have until October 17th I have until October 11 to file petition to the director.

She advised me to speak with an attorney advisor. I did and she told me to fill out petition form #3 and indicate that I filed a timely response to final office action. And in that response I requested the application be placed in suspend status since registrant was due to file maintenance documents and within grace period for filing such documents... She also included in the email that I should request a refund of the $100 petition fee. I was wondering if a refund is likely? Do you think its because of my case she requested? (The other trademark being in maintenance and not renewing and having me go through all of this) I emailed but will probably not get an answer before it is time to file this Tuesday.

If I understand correctly, you plan to file a 2.146 Petition to the Director on the advice of an "attorney advisor" (see 37 CFR 2.146: http://www.bitlaw.com/source/37cfr/2_146.html) because you received a final office action from the Examiner's Office. The Examiner said you did not include in your response any additional information for the Examiner to consider, which led to the denial.

Here is a link to the USPTO Trademark Fee Information: https://www.uspto.gov/trademark/view-fee-schedule-trademark-fee-information

And here is a link to 37 CFR 2.209, Refunds: http://www.bitlaw.com/source/37cfr/2_209.html

If your application was abandoned due to USPTO errors and you file a "Request for Reinstatement" form due to these errors, that petition fee will be refunded if it is determined you are entitled to reinstatement. Overpayments also will be refunded. But most fees that were not paid by mistake or in excess of what is required are not refundable.

With that said, I feel you sort of dropped us into the middle of your situation and it is hard to start from the middle. Could you please provide more information about your trademark, the problems you have had, and its current application status? Are you trying to register a mark that was previously registered by someone else? More information could help.

Thanks.

 

[artistdraw]

The status of my application is abandoned. The mark is similar to another mark. That is the reason the sent the first office action. I tried but failed to prove they were no similar. But the other trademark is not going to renew so that is why I am in this situation. I had explained in the final office action that they were not going to renew and that they were already past due to file maintenance. They were in the grace period. Which ends Oct 16

 

[quincy]

The status of my application is abandoned. The mark is similar to another mark. That is the reason the sent the first office action. I tried but failed to prove they were no similar. But the other trademark is not going to renew so that is why I am in this situation. I had explained in the final office action that they were not going to renew and that they were already past due to file maintenance. They were in the grace period. Which ends Oct 16

You posted here before under a different user name, didn't you?

 

[artistdraw]

You posted here before under a different user name, didn't you?

No I just joined

 

[quincy]

You sound a bit like a member named "servicemark" who posted not all that long ago about an office action on a trademark registration. Although there are some similarities in the threads, I also see differences. Here is a link to that thread: https://forum.freeadvice.com/copyrights-trademarks-39/response-trademark-office-action-628608.html

I recommended to servicemark that it was probably best to seek out assistance from an IP attorney in his area, although this is not necessary for all office actions. Some if not most can be handled with just a call to the examiner, to clarify for the examiner some points that may be confusing.

Okay. So the current status of your application is abandoned, because the USPTO said you did not respond in time to the examiner's action letter or request (or there was a claimed procedural error). You now need to file a petition with the Director so you can revive your application. Is this correct?

Your application is not only currently considered abandoned by the USPTO, you are also trying to register a trademark that is the same or similar to one listed on the Registry (although listed as "dead"). You are claiming this dead trademark has been abandoned.

Although you said that you need to file your petition by tomorrow to try to have your application revived, which certainly doesn't give you much time for a consultation, I think you would benefit from a quick review tomorrow morning by a trademark attorney in your area. The attorney can personally take a look at your trademark application and the responses to date from the USPTO to see where you stand.

The attorney can also work with you on the petition, this for your best chance of having your application revived so you do not have to begin the application process all over again. The attorney you see can better tell you if you are eligible for a refund. It's possible.

Good luck.