If you receive notice that your trademark application is “dead” or “abandoned”, you must act quickly. The United States Patent and Trademark Office (USPTO) requires a Petition to Revive within two months (or sixty days) of abandonment. Below, I explain the top reasons for abandonment, and what is necessary to revive an abandoned trademark.
Estimated reading time: 6 minutes
Generally, there are five reasons why your trademark is marked “dead.” We will go through each, and you can spot the one which applies to your situation.
A common reason is filing a Section 1(b) Intent to Use Application, receiving a “Notice of Allowance,” and failing to file a Statement of Use within the six-month deadline. Filing a Statement of Use requires payment of a $100 fee times the number of International Classes, and appropriate “specimen” attachments. The USPTO will mark the trademark application abandoned if not completed on time. As such, a Petition to Revive must be filed in order to avoid abandonment.
A second reason to revive a dead trademark is that you may have failed to renew. In fact, trademark law requires renewal between the fifth and sixth anniversary from your trademark registration date. A second renewal occurs between the ninth and tenth anniversary. However, if you fail to timely renew, your mark will be abandoned.
Any entity with standing before the USPTO may file cancellation proceedings. Briefly, just know that cancellation proceedings allow another entity to challenge a trademark. For instance, a challenger may claim that you are not using your trademark–a valid reason for cancellation.
Express abandonment is rare. However, clients sometimes come to me to “redo” their application, and start from scratch. In those instances, if the client wants to use the same name a second time, it is worthwhile to mark their former application “abandoned.”
Finally, if you fail to timely respond to an Office Action, your trademark will be abandoned. Failure to timely respond to an Office Action is the most common reason for a “dead” application. The USPTO will give you the following message:
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“The application above is abandoned because we did not receive a response to the previous Office action within the six-month response period.”
“If you did not receive the Office action or if the delay in filing your response was unintentional, you can file a Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action form. You must file the petition within two months of the issue date of this notice.”
If this happens to you, you must revive the abandoned trademark, and answer the Office Action. Below, I explain how to bring your trademark application back to life.
First, the USPTO requires a Petition to Revive filed within two months from the Notice of Abandonment date. If, however, you did not receive any notice from the USPTO, then you have six months from the date the online system indicates it was abandoned to revive an abandoned trademark. In the vast majority of cases, the USPTO will give you notice. As such, you should expect to file within two months or risk permanent abandonment. If the deadline is missed, then the application abandonment is made permanent, and a Petition to Revive will have no effect.
TheTrademark Manual or Examining Procedure (TEMP) contains the requirements to revive an abandoned trademark. See TEMP § 1714.01(a)(i); see also 37 C.F.R. §2.6(a)(15)(iv) (listing the Petition to Revive fees). There are three simple requirements:
If you need to revive your abandoned trademark and file a statement of use, then you will need the following: (1) the petition fee; (2) the petition to revive plus a statement explaining that the individual had personal knowledge that the delay was unintentional; and (3) either a statement of use with filing fees or an extension with filing fees. Note that filing a Petition to Revive does not toll a trademark’s other deadlines, and for that reason it is important to work with an experienced trademark attorney.
In conclusion, reviving an abandoned trademark is relatively straightforward. Generally, you must submit a filing fee, a statement from a person with knowledge that the delay was “unintentional,” and either a response to an Office Action or a Statement of Use, depending upon the situation. Unfortunately, a Petition to Revive does not stay other trademark deadlines. As such, it is wise to consult with an experienced trademark attorney.
Please feel free to contact Syed Law if you need help reviving your abandoned trademark.
