TRADEMARK LEARNING CENTER - by TRADEMARKS ON CALL®

Provided by Trademarks On Call®, the Trademark Learning Center is for informational purposes only, not legal advice. Select a topic below to learn more about trademarks:

Trademarks | Office Actions | Notices of Allowance | Statements of Use

Trademark Renewals | Abandoned Applications | Cancelled Trademarks

ABANDONED TRADEMARK APPLICATIONS

An abandoned trademark application is a trademark application that is no longer pending, and therefore, cannot mature into a trademark registration. There are several reasons why a trademark application may be abandoned. If your trademark has been abandoned by the U.S. Patent and Trademark Office (USPTO), you may want to consult with a licensed trademark attorney.

ABANDONED FOR FAILURE TO RESPOND TO OFFICE ACTION

While a trademark application is pending, the USPTO may issue an Office Action that sets forth legal problems with the application. A response to the Office Action must be filed with the USPTO within 6 months. If the USPTO does not receive a response by the deadline, it will declare the application abandoned.

If the delay in responding to the Office Action was unintentional, the applicant may submit a Petition to Revive the application. The Petition to Revive must be received by the USPTO within 2 months from the mailing date of the Notice of Abandonment. However, if the abandonment resulted from an error by the USPTO, the USPTO will reinstate the application at no cost (a deadline for filing such a request does apply). If your trademark application has been abandoned, you may want to consult with a licensed trademark attorney.

ABANDONED FOR FAILURE TO FILE A STATEMENT OF USE

A Notice of Allowance is a document sent by the USPTO indicating that a trademark has been allowed (but not yet registered). Once a Notice of Allowance has been received, a Statement of Use (SOU) or request for extension of time to file a statement of use (extension request) must be filed with the USPTO within 6 months. If the USPTO does not receive a SOU or extension request by the deadline, it will declare the application abandoned.

If the delay in responding to the Notice of Allowance was unintentional, the applicant may submit a Petition to Revive the application. The Petition to Revive must be received by the USPTO within 2 months from the mailing date of the Notice of Abandonment. However, if the abandonment resulted from an error by the USPTO, the USPTO will reinstate the application at no cost (a deadline for filing such a request does apply). If your trademark application has been abandoned, you may want to consult with a licensed trademark attorney.

ABANDONED FOR INCOMPLETE RESPONSE

The USPTO may abandon a trademark application where it deems an applicant has submitted an incomplete response to an Office Action.

When a trademark application has been abandoned due to the submission of an incomplete response, an applicant's recourse is to file a petition to the Director. The Director will reverse a holding of abandonment only where there has been clear error or an abuse of discretion or, in rare cases, where an applicant can show that it has substantially complied with the statutes or rules.

ABANDONED FOR FAILURE TO RESPOND TO SUSPENSION INQUIRY

Where a trademark application has been abandoned for 6 months or more, the USPTO may issue an Office Action inquiring into the matter on which the suspension was based. A response to the Office Action must be filed with the USPTO within 6 months. If the USPTO does not receive a response by the deadline, it will declare the application abandoned.

If the delay in responding to the Office Action was unintentional, the applicant may submit a Petition to Revive the application. The Petition to Revive must be received by the USPTO within 2 months from the mailing date of the Notice of Abandonment. However, if the abandonment resulted from an error by the USPTO, the USPTO will reinstate the application at no cost (a deadline for filing such a request does apply). If your trademark application has been abandoned, you may want to consult with a licensed trademark attorney.

Disclaimer: Trademarks On Call is not a law firm or a substitute for an attorney or a law firm. Trademarks On Call does not provide legal advice. The information provided on this website is for informational purposes only and does not constitute legal advice.