Abandoned Applications

 

Abandoned for Failure to Respond to Office Action

Abandoned means that the application is no longer pending and, thus, cannot mature into registration. During the pendency of an application, an examining attorney will issue an Office action letter to the correspondence address of record. A response to that letter must be received in the USPTO within six (6) months from the mailing date of that letter. If the Office does not receive a response within this period, the application is declared abandoned. The Office will then mail a notice of abandonment to the applicant or the applicant's attorney.

If the applicant’s delay in responding to the Office action was unintentional, the applicant may submit a Petition to Revive.

NOTE: The application fee is a processing fee.  Not all applications result in registrations.  The application fee will not be refunded, even if the application abandons.

File Petition to Revive Online

Applicant may electronically file through the Trademark Electronic Application System (TEAS) a petition to revive the abandoned application (return the application to active status) if the delay in responding the Office action letter was unintentional. The form provides step-by-step instructions for filing the petition.

A Petition to Revive includes a signed statement by someone with first hand knowledge of the facts stating that the delay in responding was unintentional, a $100 petition fee and a response to the unanswered office action letter. THE PETITION TO REVIVE MUST BE RECEIVED IN THE OFFICE WITHIN TWO (2) MONTHS FROM THE MAILING DATE ON THE NOTICE OF ABANDONMENT IN FULL OR IN PART. A Petition that is not timely filed will be denied.

If a response was not filed because the applicant did not receive the Office action, the applicant must still file a Petition two (2) months after the date of actual knowledge of the abandonment and not later than six (6) months after the date the trademark electronic systems indicates that the application is abandoned in full or in part, in order to revive the application. The applicant need not include a response to the Office action.

If the applicant chooses not to file a Petition to Revive or the Petition to Revive is denied, the applicant may immediately re-file a “new“ application, pay the required filing fee, and begin the application process again.

>> Petition to Revive Information Sheet <<

For more information about how to revive an abandoned application, watch the news broadcast-style video titled “Petitions” (video #11 in the Trademark Information Network (TMIN) series).

Request for Reinstatement

If the abandonment resulted from an error by the USPTO, the Office will reinstate the application at no cost. A Request for Reinstatement may be faxed to (571) 273-8950. A REQUEST FOR REINSTATEMENT MUST BE RECEIVED WITHIN TWO (2) MONTHS FROM THE ISSUE DATE OF THE NOTICE OF ABANDONMENT OR TWO (2) MONTHS AFTER THE DATE OF ACTUAL KNOWLEDGE OF THE ABANDONMENT AND NOT LATER THAN SIX (6) MONTHS AFTER THE DATE THE TRADEMARK ELECTRONIC SYSTEM INDICATES THAT THE APPLICATION IS ABANDONED. A REQUEST FOR REINSTATEMENT THAT IS NOT TIMELY FILED WILL BE DENIED.

If a timely response was received in the Office, yet the application was declared abandoned, the applicant may request reinstatement of the application, provided they can submit proof of receipt in the Office. Click on "proof" for a listing of acceptable forms of proof of receipt in the Office.

Abandoned for Failure to File a Statement of Use

Abandoned means that the application is no longer pending and, thus, cannot mature into registration. In response to the notice of allowance (NOA), a statement of use (SOU) or request for extension of time to file a statement of use (extension request) must be received in the USPTO within six (6) months from the issue date of the NOA. If the Office does not receive a proper SOU or extension request within this period, the application will be declared abandoned. The Office will then mail a notice of Abandonment to the applicant or the applicant's representative.

If the applicant’s delay in submitting the SOU or extension request was unintentional, the applicant may submit a Petition to Revive.

NOTE: The application fee is a processing fee.  Not all applications result in registrations.  The application fee will not be refunded, even if the application abandons.

File Petition to Revive Online

Applicant may electronically file through the Trademark Electronic Application System (TEAS) a petition to revive [< This is the direct link to the electronic form.] the abandoned application (return the application to active status) if the delay in responding to the NOA was unintentional. The form provides step-by-step instructions for filing the petition.

A Petition to Revive includes a signed statement by someone with first hand knowledge of the facts stating that the delay in responding was unintentional, a $100 petition fee; the required fees for the number of extension requests that should have been filed if the application had not abandoned; and either an SOU or the last extension request that was due. THE PETITION TO REVIVE MUST BE RECEIVED IN THE OFFICE WITHIN TWO (2) MONTHS FROM THE MAILING DATE ON THE NOTICE OF ABANDONMENT IN FULL OR IN PART. A Petition that is not timely filed will be denied.

If an SOU or extension request was not filed because the notice of allowance was not received, the applicant must still file a petition in order to revive the application. A statement of use or extension request does not have to be included with the petition.

Please note that extension requests must be filed every six (6) months from the issue date of the notice of allowance until the applicant is ready to file a statement of use. In addition, the filing of a petition to revive does not stay the time for filing extension requests.

If the applicant chooses not to file a Petition to Revive or the Petition to Revive is denied, the applicant may immediately re-file a “new” application, pay the required filing fee, and begin the application process again.

>> Petition to Revive Information Sheet <<

For more information about how to revive an abandoned application, watch the news broadcast-style video titled “Petitions” (video #11 in the Trademark Information Network (TMIN) series).

Request for Reinstatement

If the abandonment resulted from an error by the USPTO, the Office will reinstate the application at no cost. A Request for Reinstatement may be faxed to (571) 273-8950.  A REQUEST FOR REINSTATEMENT MUST BE RECEIVED WITHIN TWO (2) MONTHS FROM THE ISSUE DATE OF THE NOTICE OF ABANDONMENT. A REQUEST FOR REINSTATEMENT THAT IS NOT TIMELY FILED WILL BE DENIED.
 

Abandoned for Incomplete Response

An applicant may revive an abandoned application when the delay in responding to an Office action was unintentional. This rule does not apply to the unintentional filing of an incomplete response to an examining attorney's Office action.

When an application is deemed abandoned due to submission of an incomplete response, the applicant's recourse is to file a petition to the Director under Trademark Rule 2.146. The Director will reverse the examining attorney’s holding of abandonment only if there has been clear error or an abuse of discretion or, in rare cases, where a petitioner can show that it has substantially complied with the requirements of the statute or rules. See TMEP Section 1713.

If the applicant’s petition is denied, the applicant may immediately re-file a “new” application, pay the required filing fee, and begin the application process again.

NOTE: The application fee is a processing fee.  Not all applications result in registrations.  The application fee will not be refunded, even if the application abandons.
 

Abandoned for Failure to Respond to Suspension Inquiry

Abandoned means that the application is no longer pending and, thus, cannot mature into registration.  Generally, if an application has been suspended for six months or more, the examining attorney will issue an Office action letter to the correspondence address of record inquiring as to the status of the matter on which suspension was based.  A response to that letter must be received in the USPTO within six (6) months from the mailing date of that letter. If the Office does not receive a response within this period, the application is declared abandoned. The Office will then mail a notice of abandonment to the applicant or the applicant's attorney.

If the applicant’s delay in responding to the Office action was unintentional, the applicant may submit a Petition to Revive.

NOTE: The application fee is a processing fee.  Not all applications result in registrations.  The application fee will not be refunded, even if the application abandons.

File Petition to Revive Online

Applicant may electronically file through the Trademark Electronic Application System (TEAS) a petition to revive the abandoned application (return the application to active status) if the delay in responding the Office action letter was unintentional. The form provides step-by-step instructions for filing the petition.

A Petition to Revive includes a signed statement by someone with first hand knowledge of the facts stating that the delay in responding was unintentional, a $100 petition fee and a response to the unanswered office action letter. THE PETITION TO REVIVE MUST BE RECEIVED IN THE OFFICE WITHIN TWO (2) MONTHS FROM THE MAILING DATE ON THE NOTICE OF ABANDONMENT IN FULL OR IN PART. A Petition that is not timely filed will be denied.

If a response was not filed because the applicant did not receive the Office action, the applicant must still file a Petition two (2) months after the date of actual knowledge of the abandonment and not later than six (6) months after the date the trademark electronic system indicates that the application is abandoned in full or in part, in order to revive the application. The applicant need not include a response to the Office action.

If the applicant chooses not to file a Petition to Revive or the Petition to Revive is denied, the applicant may immediately re-file a “new” application, pay the required filing fee, and begin the application process again.

>> Petition to Revive Information Sheet <<

For more information about how to revive an abandoned application, watch the news broadcast-style video titled “Petitions” (video #11 in the Trademark Information Network (TMIN) series)

Request for Reinstatement 

If the abandonment resulted from an error by the USPTO, the Office will reinstate the application at no cost. A Request for Reinstatement may be faxed to (571) 273-8950. A REQUEST FOR REINSTATEMENT MUST BE RECEIVED WITHIN TWO (2) MONTHS FROM THE ISSUE DATE OF THE NOTICE OF ABANDONMENT OR TWO (2) MONTHS AFTER THE DATE OF ACTUAL KNOWLEDGE OF THE ABANDONMENT AND NOT LATER THAN SIX (6) MONTHS AFTER THE DATE THE TRADEMARK ELECTRONIC SYSTEM INDICATES THAT THE APPLICATION IS ABANDONED. A REQUEST FOR REINSTATEMENT THAT IS NOT TIMELY FILED WILL BE DENIED.

WARNING: The fact that an application or registration is listed as “abandoned” or “cancelled” in the USPTO database does not automatically mean that the owner has stopped “using” the mark or that the mark is now available for your “use” or “registration.”  It is important to remember that the USPTO database is limited to federal trademark applications and registrations and does not include the marks of other parties who may have trademark rights but no federal registration. These rights, known as “common law” rights, are based solely on “use” of the mark in commerce within a particular geographic area. Common law rights may be stronger than those associated with a registration, if the common law use is earlier than the use that supports the registration. Therefore, it is critical to learn whether superior common law rights exist, by searching the Internet for websites and articles that reference similar marks that are related to your goods and services. You should also search state trademark databases and business name databases. Because searching all these sources and evaluating the results can be complex, you might consider hiring a trademark attorney to assist you with a “full” or “comprehensive” trademark search. For more information about “common law” trademark rights and hiring a trademark attorney see the Basic Facts About Trademarks booklet.