Key Takeaways

  • A trademark may be abandoned for failure to respond to USPTO deadlines or nonuse in commerce.
  • A Petition to Revive can only be filed within strict time limits and requires specific statements and fees.
  • You must declare the failure to respond was unintentional and complete any outstanding action.
  • Not all abandoned trademarks are revivable—some may require a new application or legal action.
  • Legal assistance is recommended for complex revival or opposition issues.

A petition to revive trademark is a form filed with the United States Patent and Trademark Office (USPTO) to regain the right to a trademark for which you have allowed registration to lapse or to begin using a mark another entity has abandoned. Trademark protection through the USPTO prevents others from using your protected design, phrase, word, or symbol. Simply using a unique trademark in the marketplace gives you rights over the mark. However, if you stop using the mark, it can potentially be taken over by another individual or business.

Reasons for Losing a Trademark

Trademark rights can be lost when:

  • The mark becomes generic.
  • The mark is improperly assigned or licensed to a third party.
  • The mark is abandoned, which means it has not been used for at least three years in a row. This is called prima facie abandonment.

Knowing why you have lost the rights to your trademark is the first step in getting them back. While abandoned marks can often be revived, generic or improperly assigned marks can no longer be effectively used to stand for your product in the market.

Additional Causes of Abandonment

In addition to nonuse and genericide, abandonment may also result from procedural missteps such as failure to file a required maintenance document, like the Section 8 Declaration of Use or Section 9 Renewal Application. Missing these filings leads to cancellation or expiration of a trademark registration. Another less common cause is failing to monitor and enforce the mark’s use, allowing others to dilute or infringe it without action.

Steps To Revive a Trademark

  • Check the status of the trademark by searching the USPTO database, called the Trademark Electronic Search System. If someone else has begun using the mark and/or registered the mark with the USPTO, you will not be able to revive it. However, you may be able to license the rights from the trademark's new owner for a fee.
  • If the trademark is simply marked as abandoned, you can re-establish your rights to the mark by using it in commerce. You do not need to federally register the mark to have legal rights over it as long as it is in continuous use to represent your business in the market.
  • You can secure your rights to the trademark by registering the mark with the USPTO. Although this is not required, it will create a stronger legal case if your ownership of the mark is ever challenged.
  • If your situation is complex, you may want to consult with an experienced intellectual property attorney about your trademark rights.

Key Deadlines and Restrictions

When learning how to revive an abandoned trademark, it’s crucial to understand the deadlines:

  • A Petition to Revive must be filed within two months of the Notice of Abandonment.
  • If no Notice was issued, you have two months from when the USPTO updated the status to abandoned.
  • You cannot file a Petition to Revive if six months have passed since the mark was abandoned or if the registration was canceled/expired.
  • Certain abandonment cases (like failure to renew an existing registration) are not eligible for revival; instead, a new application is necessary.

Filing a Petition To Revive a Trademark

If you abandon a trademark registration application, you can reinstate it by filing a Petition to Revive. This step is required if you have failed to respond to an office action during the application process or do not file a statement of use or a required extension.

If you receive a notice of abandonment or have abandoned your trademark application, you have two months from that date to file a petition to revive the mark. This is done if you unintentionally fail to respond to the original deadline, which you must swear to in court. You must also pay a petition fee and complete the action that was originally required. When you make this request, you may be eligible to move the application from abandoned to either pending or active.

After six months have passed since the petition is marked as abandoned, you may no longer file the petition to revive. This is also true when the mark is expired or canceled because of error on the part of the USPTO.

If the action that was not answered was a final office action, you must also file a notice of appeal with the Trademark Trial and Appeal Board. This is treated as a request for consideration and is possible only if:

  • You file the request either within two months of the petition's denial date or between two and six months of the date if you declare that you did not receive the original decision.
  • You pay another petition fee.

Filing Requirements and Documentation

A successful Petition to Revive must include:

  • A verified statement explaining the failure to respond was unintentional.
  • The required government filing fee (currently $150 per class, but subject to change).
  • Completion of the outstanding action that caused abandonment, such as responding to an office action or submitting a Statement of Use.
  • A proper signature from an authorized party, such as the applicant or attorney of record.

Submissions are typically filed electronically through the USPTO’s Trademark Electronic Application System (TEAS). Ensure all forms are complete and accurate to avoid rejection.

When Revival May Not Be Possible

In some cases, a trademark cannot be revived:

  • If the abandonment was intentional (e.g., a business decision to stop pursuing registration).
  • If the mark’s registration was canceled for failure to maintain (such as missing a Section 8 or Section 9 filing).
  • If another party has filed a new application or is already using the mark in commerce.

In such scenarios, the applicant may need to file a new application or explore other remedies, such as filing an opposition or cancellation proceeding against the conflicting mark.

Frequently Asked Questions

  1. Can I revive a trademark if it’s been abandoned for more than six months?
    No, after six months from the abandonment date, revival through a Petition to Revive is no longer available.
  2. Is a Petition to Revive available for canceled or expired trademarks?
    No, if a trademark was canceled or expired for failure to file maintenance documents, you must file a new application.
  3. How much does it cost to file a Petition to Revive?
    The USPTO filing fee is currently $150 per international class, but check for updates on the USPTO website.
  4. Can someone else register my abandoned trademark?
    Yes, once abandoned, a third party may file a new application for the same or similar mark if it’s available.
  5. Do I need a lawyer to file a Petition to Revive?
    While not required, an attorney can help ensure compliance with USPTO rules and improve your chances of success.

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