How to Revive An Abandoned Trademark Application

PETITION TO REVIVE TRADEMARK APPLICATIONS: THE FUNDAMENTALS

As a brief reminder, A trademark may be a word, slogan, logo, sound, motion – a symbol which when used in conjunction with a good or service, distinguishes the good/service from competitors and allows consumers to identify the source of the good/service sold. In order to file a trademark application with the United States Patent and Trademark Office (USPTO), the applicant must provide various pieces of information within the application including;

 

1. The contact information of the applicant
2. The legal status of the applicant (a person or business entity)
3. The nature of the trademark (is it a word, design, slogan, or sound/motion trademark)
4. The description of the Trademark
5. The class of goods/services to which the Trademark will be assigned
6. A description of the goods/services
7. A specimen showing use of the goods/services in commerce
8. A statement of first use of the trademark, both generally, and in commerce
9. An indication that the Application is an Intent-to-Use if the mark has not yet been used in commerce

 

Once the trademark application has been submited to the USPTO (along with the required fee of either $275.00 or $225.00 per class), the applicant anywhere from 3-5 months to hear back from the USPTO with either a confirmation that the trademark is acceptable or with a Trademark Office Action, outlining the reasons for the trademark application’s deficiencies.

In the event that you have submitted a trademark application but did not complete the process until the point of trademark registration (typically by either responding to an office action or submitting a statement of use), the United States Patent and Trademark Office (USPTO) will designate your trademark as “Abandoned”.

REVIVING YOUR ABANDONED TRADEMARK; IT’S NOT TOO LATE

The United States Patent and Trademark Office can reinstate an abandoned trademark application if certain conditions are met. Failing to respond to a Notice of Allowance, or any Office Action from the United States Patent and Trademark office, does not automatically circumvent all avenues available to revive an abandoned trademark application. The first consideration is the amount of time that has elapsed since the trademark application was declared abandoned.

STEPS TO PETITION TO REVIVE AN ABANDONED TRADEMARK APPLICATION WITH THE USPTO

That your trademark has gone abandoned is not necessarily a fatal conclusion and the USPTO provides its applicants an opportunity to revive an abandoned trademark under certain circumstances.

A Notice of Abandonment will be sent by the United States Patent Office, and the trademark applicant has two months from the date of the notice to respond. If the trademark applicant alleges the Notice of Abandonment was never received, the applicant has up to six months from the recorded date of abandonment to revive the trademark application. The electronic record system maintained by the United States Patent Office determines the date the trademark application was declared abandoned. Any petition regarding the unintentional abandonment of the trademark application will be reviewed by the paralegals in the Office of the Deputy Commissioner to determine if the trademark application can be revived.

The USPTO is a Stickler for Details

Like all dealings with the USPTO, form matters and there are specific procedural rules and requirements that must be met when filing a petition to revive.

These requirements are demarcated in the Trademark Manual of Examining procedure (“TMEP”) §1714 – §1714.01(g) and 37 C.F.R. §2.66

Specifically, applicants have the opportunity to submit a petition with the USPTO to revive the trademark application within two months of the issuance of the Notice of Abandonment; or, two months after the date of actual knowledge of the abandonment but no later than six months from the date the trademark electronic system shows the abandonment, stating that the delay in response was due to an unintentional error, IN ADDITION to submitting whatever was originally requested by the USPTO to complete the trademark registration (either a Statement of Use or a Response to a Trademark Office Action).

REVIVING THE TRADEMARK APPLICATION WHEN THE APPLICANT FAILED TO FILE A STATEMENT OF USE OR ASK FOR AN EXTENSION

In the event that the trademark applicant erred in submitting the petition to revise, the applicant will receive a notification from the USPTO that the petition failed to satisfy the USPTO’s requirements and the applicant will have thirty days to correct the petition’s shortcomings.

Thus, there are fundamentally two situations under which trademark abandonment will occur and a Petition to Revive will be required:

 

1. Where the original trademark application was halted due to the USPTO’s issuance of a trademark office action and the applicant did not respond to the Office Action in a timely manner. To revive the abandoned trademark in this scenario, the applicant must provide the USPTO;

• A signed statement from an individual with “first hand knowledge” of the facts of the case, which asserts that the delay in responding to the Office Action was unintential
• The petition fee
• The Substantive or Procedural response to the Office Action (unless the applicant claims that he/she has in fact never received the Office action, which will result in a new and extended response period

 

2. Where the original trademark application was accepted but the applicant failed to file a statement of use (showing that the trademark was in fact used in interstate commerce) or a request for an extension. To revive the abandoned trademark in this scenario, the applicant must provide the USPTO;

• A signed statement from an individual with “first hand knowledge” of the facts of the case, which asserts that the delay in responding to the Office Action was unintential
• The petition fee
• The statement of use or extension request for time to file the trademark statement of use
• The trademark statement of use filing fee (in the event that the petition will also include the statement of use)
• The trademark extension fees

 

What many of our clients find surprising is that the USPTO “just believes” that the failure to respond to the Office Action or submit the Statement of Use was unintentional. However, the reality is that the USPTO will very rarely challenge this assertion and in fact will likely only challenge this assertion if there is some reason or evidence that suggests the delay was intentional. For example, if the applicant submits an incomplete response to a trademark Office Action, that would suggest that the reason for failing to provide a complete response to the Office Action was not merely unintentional, and therefore would conceivably trigger a rejection of a petition to revive. Of course then, the petitioner may invoke his right to file a petition for review.

HOW MUST A STATEMENT OF UNINTENTIONAL DELAY BE WORDED?

The United States Patent and Trademark Office generally accepts a petitioner’s statement that a delay was unintentional, and will permit the trademark application to be revived. The petitioner’s statement will not be accepted if the response to an Office Action is incomplete. When the petitioner’s response is incomplete, the Examiner can choose to either extend the applicant’s time to respond or to declare the application abandoned for failing to submit a complete response. If the applicant feels the Examiner was incorrect for declaring the trademark application abandoned, the applicant can file a petition for review with the Director of the United States Patent and Trademark Office.

A clear procedural error would compel the Director to reverse the Examiner’s determination and the trademark application could proceed.

An attorney whose area of practice is intellectual property is best positioned to answer any questions about reviving an abandoned trademark application, responding to an Office Action or an inquiry pertaining to a Notice of Allowance from the United States Patent and Trademark Office.

CHECKLIST TO REVIVE AN ABANDONED TRADEMARK

1. Submit a statement to the USPTO asserting that your trademark went abandoned unintentionally

 

2. Submit the appropriate USPTO filing fee

 

3. Include the submission of a petition to file for an extension (if the lack of such a submission was the cause of the trademark abandonment)

 

4. Include a response to the originally issued Office Action (either procedural or substantive) if the lack of such a response was the cause of the trademark abandonment

Speak with a Trademark Attorney

Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your case. There are of course many complexities and nuances involved in satisfactorily filing a petition to revive an abandoned trademark and we would love to help.

 

Have a question? We want to know. Contact a Trademark Lawyer today.