Filing for a trademark is a necessary step in marketing and branding your organization and products. At the same time you also step into a world of bureaucracy and hard deadlines. Skip a step or blow a deadline and you might find a nasty notice from the United States Patent and Trademark Office (USPTO) in your mailbox.
Perhaps the nastiest of these is the Notice of Abandonment.
The USPTO issues a Notice of Abandonment if they do not receive proper correspondence during the lifespan of a pending trademark application. An applicant might receive a Notice of Abandonment for any number of reasons, including unintentional non-responses and mistakes in mailing during the trademark registration process.
Thankfully, the USPTO offers clemency for companies that make these mistakes. Forgetful applicants have opportunities to reclaim their registrations and protect their intellectual property. The specific avenues available depend on the manner of abandonment and the application’s specific circumstances.
Abandonment happens
Once you submit your trademark application, the USPTO will review it. The process usually takes four to six months. If the USPTO finds issues with your application, including technical errors or similarities to existing marks, the examining attorney will issue an Office Action. Therein you will find the action necessary to complete the review process.
The USPTO requires responses to Office Action letters within six months of its mailing date. Abandonment most frequently occurs at this stage. If you fail to respond, for any reason, the USPTO will issue a Notice of Abandonment.
In some cases the USPTO will send the Office Action to the wrong address. This is the least common, but the most recoverable. Other cases include simple failure to respond due to inaction, failure to respond to a Notice of Allowance with a Statement of Use (SOU), and non-reception of the Office Action by the applicant. (You may very well be able to get an extension of time to file an SOU as well.)
Reviving an abandoned trademark application
If the USPTO sends the Office Action to the wrong address, the applicant has a simple path to reinstatement. They must fill out and file a Request for Reinstatement form. Along with the form, the applicant must submit a signed statement, from someone with first-hand knowledge of the facts leading to abandonment. The deadline for this request is two months from the mailing date of the Notice of Abandonment.
If the applicant received the Office Action letter, but the failure to respond in the prescribed time period was unintentional, the USPTO requires a Petition to Revive the application. Along with the petition, the applicant must pay a $100 fee and provide two further pieces of information. First, a statement signed by an individual with first-hand knowledge of the facts. Second, they do require a complete response to the Office Action. The deadline for this action is two months from the date of the Notice of Abandonment.
If the applicant does not file a Statement of Use or apply for an Extension Request in response to a Notice of Allowance, he must file additional paperwork. The applicant must also submit a statement that the delay was unintentional, signed by someone with first-hand knowledge of the facts.
The applicant also owes all required fees for Extension Request that became due since the Notice of Allowance was issued, plus the $100 petition fee.
Finally, the applicant must submit the Statement of Use if the applicant is using the mark in commerce. All of this is due within two months from the date of the Notice of Abandonment.
If the applicant claims to have never received the Office Action letter or Notice of Allowance, they are also subject to the $100 petition fee. In this case the only filing required is the statement that the delay was unintentional, signed by someone with first-hand knowledge of the facts. Again, this filing is due within two months from the mailing of the Notice of Abandonment.
Keep in mind that you likely already have some legal protection under common law trademark rights.
Read more on common law rights
Avoiding Abandoned Trademark Applications
With the mountain of paperwork that can accrue in the event of abandonment, prevention is the best practice. You can take steps to reduce the chances of your application being abandoned:
- When submitting an application, update your contact information with the USPTO to avoid any errors in contact
- Monitor the status of your application throughout its lifespan
- Be sure to make all paperwork pertaining to registration a high priority for response, in order to avoid any last-minute deadline issues and a consequent workload
Regardless of the specific circumstances surrounding abandonment, it is important to know your options for reviving an application and seeing it through to registration. Know the events of abandonment, reference the required actions for revival, and file them in a timely and complete manner. Without question, registration is the goal, and any additional paperwork required in the process of becoming a trademark owner is worth the time and energy.
A trademark attorney can help ensure that you’re able to avoid these potential issues, as we deal with the specifics of trademark law every day. From knowing what classes of goods and services you need to register under, to avoiding likelihood of confusion and nonuse issues, we’re here to help you avoid cancellation or trademark abandonment.
