Key Takeaways

  • A trademark application can be considered abandoned if deadlines for responses, statements of use, or renewals are missed.
  • To revive an abandoned trademark application, file a Petition to Revive within two months of receiving the Notice of Abandonment.
  • If a trademark registration lapses, reinstatement may be possible, but often requires reapplication.
  • Common causes of abandonment include failure to respond to USPTO Office Actions, non-use of the mark, and missed renewal deadlines.
  • If abandonment was due to USPTO error, you can request reinstatement without a fee.
  • Special rules apply to intent-to-use applications, making timely responses crucial.
  • If international trademarks are tied to a U.S. trademark, their status could be impacted by abandonment.
  • Hiring a trademark attorney can increase the chances of successfully reviving an abandoned trademark application.

What does reviving an abandoned trademark application entail? A trademark application or registration can be considered abandoned for a number of reasons, but there are actions you can take to reverse it.

What Can You Do to Revive an Abandoned Trademark Application?

If you or someone else has applied for a trademark, but for some reason did not continue the process after receiving an Office Action or Notice of Allowance, there are steps you can take to restart the application.

You will have to file a petition with the United States Patent and Trademark Office (USPTO) to revive the application within two months after the Notice of Abandonment has been posted and within six months after the USPTO electronically posts that the application has been abandoned. Your petition will be reviewed by the Office of the Deputy Commissioner (ODC) for trademark examination policy. The full procedural requirements for this process can be found on the ODC website.

USPTO's new Examination Guide presents new rules: petitions to revive abandoned applications have to be filed no later than six months after the USPTO's electronic records show the application is abandoned. This deadline also applies to applications and registrations that have been abandoned, expired, or canceled because of an error made by the USPTO.

If you've found your trademark application has been abandoned, include these with your petition to revive your trademark application:

  • A statement that says the delay was unintentional. The USPTO normally accepts claims the delay was unintentional, unless they have proof otherwise. If the delay was due to an incomplete response to an Office Action, it won't be considered unintentional. The ODC could extend your time to respond if the incomplete response was an accident, or they could deny it altogether.
  • The fee for the petition.
  • If the trademark abandonment was due to a lack of response to the original Office Action, you must now send that response. If you didn't get one, mention this in the petition and a new one will be sent out.
  • If the abandonment was due to a failure to file for an extension, file it here, along with the appropriate fees.
  • If there are any problems with the petition, you'll be notified and have 30 days to fix it.

Your petition will be denied if you've applied for an intent-to-use trademark application and accepting the petition would extend the 36 months you would normally have to file your statement of use.

These rules are only concerned with abandoned trademark applications -- not post-registration filings. If the Office Action response failure is a Section 8 Affidavit or Section 9 Renewal Application, a petition to revive will not be available. These are to prove you are still using the trademark.

Understanding Trademark Abandonment and Its Implications

A trademark is considered abandoned if the applicant fails to meet specific USPTO deadlines, such as responding to an Office Action, filing a Statement of Use, or renewing the registration. The consequences of abandonment include losing exclusive rights to the mark, allowing competitors to register a similar or identical mark.

The USPTO marks an application as abandoned when it does not receive a required response within the prescribed timeframe. The abandonment notice is available in the Trademark Status and Document Retrieval (TSDR) system, and a formal Notice of Abandonment is sent to the applicant.

There are two main scenarios for reviving an abandoned trademark:

  1. Unintentional Abandonment – If abandonment was due to an oversight, applicants can file a Petition to Revive within two months of the abandonment notice.
  2. USPTO Error – If abandonment occurred due to an error on the USPTO's part, applicants can request reinstatement with proof of compliance.

To avoid abandonment, applicants should regularly check their TSDR status and work with a trademark attorney to track deadlines.

Filing a Petition to Revive an Abandoned Trademark Application

To revive an abandoned trademark application, follow these steps:

  1. Check the Status in the TSDR System – Confirm whether your trademark is marked as abandoned and the date of abandonment.
  2. Determine Eligibility – Ensure the abandonment was unintentional and that you are within the two-month filing deadline from the USPTO notice.
  3. Prepare the Petition to Revive – This must include:
    • A signed statement affirming the delay was unintentional.
    • The required USPTO petition fee.
    • A response to the Office Action (if applicable).
  4. Submit via TEAS (Trademark Electronic Application System) – Petitions should be filed electronically on the USPTO website.
  5. Wait for USPTO Review – The USPTO will review the petition, and if there are deficiencies, they will issue a 30-day correction notice.

If the petition is approved, the trademark application will proceed as if it was never abandoned.

How to Revive a Lapsed Trademark Registration

Often, lapsed or abandoned trademarks is due to people failing to file a Section 8 Declaration of Continued Use. After 5 or 6 years of registering a trademark, this must be filed to let the USPTO know the trademark is still being used. You can't revive an abandoned trademark registration. You'll have to re-apply for the registration.

Sometimes, the ODC makes mistakes. If you believe the trademark registration was abandoned or expired because of an error by the ODC, follow these steps:

  • File a written request to reinstate an abandoned application. There is no fee for filing. It has to be filed before two months after the Notice of Abandonment was issued or two months after you became aware of the abandonment.
  • The request has to include one of the following:
    • Proof a response to an Office Action, a statement of use, or a request for extension of time to file a statement of use was filed before deadline. Provide a copy.
    • A receipt from the Office that shows the response or document was accepted
    • Proof the Office processed the fees for these filings
    • Proof the Office sent the Office Action or notice of allowance to an incorrect address
    • Any other proof that the Office incorrectly abandoned the application
  • If you're not entitled to a reinstatement of your registration, your request will be considered a petition to revive.
  • If you're trying to send a request after two months after the notice of abandonment was issued, you must prove you did not receive the notice and you were checking the status of your application every six months. Even if you are successful in reviving your registration, any international registrations of the trademark may be terminated.
  • You won't be able to extend the time for filing an opposition past 180 days and the opposition has to be filed electronically.

Can You Revive an Abandoned Trademark After Registration?

Unlike applications, a lapsed trademark registration cannot be revived if it was abandoned due to non-renewal. Instead, applicants must reapply for the trademark and go through the full registration process again.

However, if the USPTO erroneously canceled or expired the registration, you can request reinstatement within two months by proving compliance. Acceptable proof includes:

  • A receipt of filing for a renewal application.
  • Documentation showing fees were paid before the deadline.
  • Evidence that the USPTO sent renewal notices to the wrong address.

Failure to actively use the trademark can also result in third-party challenges or loss of rights.

Common Reasons for Trademark Abandonment and How to Prevent Them

Understanding why trademarks become abandoned can help prevent future lapses. Common reasons for abandonment include:

  1. Failure to Respond to an Office Action – The USPTO requires responses within six months of issuance.
  2. Missed Statement of Use Deadlines – Intent-to-use applications require proof of use within the set timeframe.
  3. Non-Renewal – Section 8 and 9 renewal filings are required to maintain active registration.
  4. Lack of Use in Commerce – Trademarks must be actively used; otherwise, they may be challenged or canceled.
  5. Clerical Errors – Misspellings, incorrect addresses, or missing signatures can lead to unintentional abandonment.

To prevent abandonment, businesses should track deadlines, maintain accurate records, and consult a trademark attorney when in doubt.

Frequently Asked Questions

1. How long do I have to revive an abandoned trademark application? You must file a Petition to Revive within two months of the USPTO's Notice of Abandonment. If you did not receive the notice, you may still have up to six months from the abandonment date to file.

2. Can I revive a dead trademark registration? In most cases, no. If a registration has lapsed due to non-renewal, a new application is required. However, if abandonment was due to USPTO error, you can request reinstatement within two months.

3. What happens if my petition to revive is denied? If the USPTO denies your petition, you may need to restart the application process from scratch. Consulting a trademark attorney can help improve your chances of success.

4. Can someone else register my abandoned trademark? Yes, once a trademark is abandoned, it becomes available for other parties to register. This is why timely action is crucial to protect your rights.

5. How can I avoid trademark abandonment in the future? Regularly check the TSDR system, keep track of deadlines, hire a trademark attorney, and set up automated reminders for renewals and Office Action responses.

If you need help with reviving an abandoned trademark registration, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.