Trademark applications have strict deadlines. If a deadline for your trademark application has lapsed, the United States Patent and Trademark Office (USPTO) may deem your trademark application “abandoned” and, unless you timely take the appropriate steps, your trademark application can not be registered. The process to revive an abandoned trademark application can prove legally complex and challenging. If you are curious about the requirements and what you will need to do to revive an abandoned trademark application, consider reaching out to an experienced intellectual property attorney at the War IP Law, PLLC at 202-902-6362.
When Is a Trademark Application Abandoned?
A trademark application is considered “abandoned” if the USPTO does not receive a response to an office action, or necessary documents in a timely fashion. There are two instances that commonly occur that result in an abandoned trademark applicaiton.
- If an examining attorney at the USPTO has issued an office action (or a similar communication) which required a response and no response was filed, the trademark application is deemed “abandoned”.
- If a Notice of Allowance was issued and the required Statement of Use or Request for Extension of Time to File a Statement of Use, is not received in a timely manner, the trademark application is deemed “abandoned”.
What Happens When a Trademark Application is Abandoned?
When a trademark application is “abandoned”, it means the USPTO is no longer examining the trademark application, the application is no longer pending, and it cannot manifest into a registered trademark. If your trademark application is abandoned, the process of trying to obtain a trademark registration is over, until you revive the application or file a new trademark application.
How To Revive an Abandoned Trademark Application
There are ways to legally revive an abandoned trademark application and continue the process of attempting to register your trademark and receive legal protection for your intellectual property. In some instances, a person may submit a petition to revive an abandoned trademark and request that the submitted trademark be returned to pending or active status. The Trademark Manual of Examining Procedure Chapters 1600 and 1700 delineate between unintentional lapses that were either a petitioner’s fault or the fault of USPTO.
Four Common Circumstances Requiring Revival of an Abandoned Trademark Application
There are four common circumstances in which an abandoned trademark application can be successfully revived. The deadline for filing the Petition to Revive depends on the underlying circumstances. Failure to timely file the Petition to Revive may prevent you from reviving your trademark application.
Type 1: Office Action Was Received
Underlying Circumstances:
The first common circumstance in which an abandoned trademark application can be revived is when an examining attorney issued an office action (which required a response from the applicant ), but a response was not timely filed. Perhaps the applicant simply overlooked the deadline, and this missed action was not intentional. Nevertheless, once a deadline has passed, the trademark application will need to be revived.
What You Need:
The person attempting to revive the trademark application must submit a petition to revive the application, the petition fee, and provide a statement that the oversight was unintentional. They must also file a response to the outstanding office action. An experienced intellectual property attorney at War IP Law, PLLC can ensure that you submit the appropriate paperwork to revive the trademark application and properly respond to the office action.
Type 2: Notice of Allowance Was Received
Underlying Circumstances:
Once a Notice of Allowance is issued, the applicant has six months to: (1) file a Statement of Use, a Specimen of Use, and the required fee, or (2) file a Request for an Extension of Time (with the required fee) to file the Statement of Use. If the applicant has received the Notice of Allowance, but still fails to file either a Statement of Use or to Request an Extension of Time during the six month period, the trademark application can be revived.
What You Need:
Again, a Petition to Revive the Application must be filed and the required petition fee must be paid. A person with first-hand knowledge must sign a declaration stating that the failure to meet the six-month deadline was unintentional. A Statement of Use showing use of the mark with the related goods or services during the allowable period of time, or a Request for an Extension of Time to use the mark and any associated fees must also be paid immediately.
Type 3: Office Action That Was Not Received
Underlying Circumstances:
When the USPTO issues an office action, the office action is typically sent via email or mail to the applicant , or if the applicant is represented by an attorney, to the applicant ’s attorney. If an office action was issued, but the applicant (or his attorney) did not receive the office action then a Petition to Revive the trademark application can be used to revive the application These circumstances may represent an error or oversight on behalf of the USPTO.
What You Need:
If you never received an office action with respect to your trademark and it is now considered abandoned, the USPTO may waive the fee for the Petition to Revive your trademark application. In these circumstances, consider reaching out to the War IP Law, PLLC for more information on this process to ensure your rights remain protected.
Note: Be advised, if you claim the office action was not received, it is your responsibility to ensure you have accurate correspondence addresses and email addresses on file. You must make changes using the electronic Change Address or Representation Form.
Type 4: Notice of Allowance That Was Not Received
Underlying Circumstances:
When the USPTO issues a Notice of Allowance, the Notice of Allowance is typically sent via email or mail to the applicant , or if the applicant is represented by an attorney, to the applicant ’s attorney. If a Notice of Allowance was issued, but the applicant (or his/her attorney) did not receive the Notice of Allowance then a Petition to Revive the trademark application can be used to revive the application. These circumstances may represent an error or oversight on behalf of the USPTO.
What You Need:
If you never received the Notice of Allowance with respect to your trademark and it is now considered abandoned, the USPTO may waive the fee for the Petition to Revive your trademark application. In these circumstances, consider reaching out to the War IP Law, PLLC for more information on this process to ensure your rights remain protected.
Note: You must claim that the delay was unintentional and it was directly due to the fact that neither you nor your attorney received the original notice. Be advised that all correspondence with the United States Patent and Trademark Office requires your most current address.
Consider Contacting an Experienced Intellectual Property Attorney Regarding How to Revive a Trademark Application
There are many legally complicated requirements you may want to consider regarding reviving an abandoned trademark application. If you want to know more about this process and ensure your legal right to your intellectual property remains protected, consider visiting with an experienced intellectual property attorney at War IP Law, PLLC at 202-902-6362. We can provide a consultation to review the abandoned trademark and give you all of your legal options.
