Trademark applications have a lifespan that can be prematurely cut short. Fortunately, if your application meets an untimely demise, there are ways to bring your application back from the dead, or "revive" it, so that you can continue to move your trademark closer to registration. Don't worry, no zombies here. (We reached our quota of corny jokes for the day!)
NOTICE OF ABANDONMENT
A notice of abandonment is a letter from the United States Patent & Trademark Office notifying you that your trademark application has been abandoned. They look something like this. An Applications will be considered abandoned for one of 5 reasons:
- Failure to respond or provide a complete response to an office action
- Failure to provide a statement of use (only applicable when filing a trademark application on an intent-to-use basis, also referred to as a Section 1(b) Application)
- Failure to Respond to a Suspension Inquiry
- Voluntary abandonment
- Abandonment as a result of a legal proceeding before the Trademark Trials & Appeals Board
When an application is abandoned it means that it is no longer pending and will not move mature towards registration unless action is taken. Receiving a notice of abandonment does not mean you should give up on your application. Instead, you should take action by attempting to revive your application or request that it be reinstated.
PETITION TO REVIVE
A petition to revive is a document filed with the USPTO requesting that your application is restored to "pending" status. You have exactly 2 months from the date you received your notice of abandonment to file a petition to revive. The cost to file a petition to revive is $100. When a petition to revive is filed, you must also address any underlying issues that led to the notice of abandonment being issued. For example, if you received a notice of abandonment for failure to timely respond to an office action, a petition to revive and a response to the office action will be required to move your application forward. Simply reviving the application without addressing the underlying issues will not fix your application.
REQUEST FOR REINSTATEMENT
A request for reinstatement is used to reinstate a trademark application that was abandoned due to USPTO error. If the abandonment truly occurred in error, the USPTO will reinstate your application at no cost. You must, however, be able to provide evidence that the USPTO truly committed an error or the request will be denied. Like a petition to revive, a request for reinstatement must be received by the USPTO no later than 2 months after the receipt of a notice of abandonment.
Once a trademark application is abandoned, the decision to revive the application is largely a business decision. Failure to revive an application will lead to the cancellation of the application and forfeiture of the filing fees paid to the trademark office. It is worth at least considering a revival, as the receipt of a notice of abandonment does not mean your application cannot be registered, it simply means there was an issue that you failed to address in a timely manner.
Is Your Trademark Application Abandoned?
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Hawkins IP is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, reach out and let's chat.