Revive Abandoned Trademark Application
A trademark application or registration can be considered abandoned for a number of reasons, but there are actions you can take to reverse it.4 min read
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.
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.
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