Reviving Abandoned Trademark Applications
Our company is has abandoned trademark applications and the United States Patent and Trademark Office (USPTO) has issued Notices of Abandonment for some of our trademark applications. What is the procedure to revive these abandoned trademark applications?
Abandoned Trademark Applications: How it Happened
Over a year ago, in anticipation of future sales some of our company’s research and development pipeline products, the marketing department filed several Intent-to-Use Trademark Applications in the USPTO. Our vice president of sales recently authorized his department to take advance orders for two new products and he was informed that the Intent-to-Use Trademark Applications for the two new products were considered abandoned by the USPTO.
Why it Matters
We just learned that one of our competitors filed two Intent-to-Use Trademark Applications in the USPTO and that those two Trademark Applications were identical to our company’s now abandoned Trademark Applications.
Can we do anything to keep our competitor from obtaining federal registrations for our Trademarks?
Depending on the timelines of each company’s Trademark Applications, maybe.
Petition to Revive Requirements
Under most factual circumstances, 37 Code of Federal Regulations 2.66 requires that the Petition to Revive abandoned Trademark Applications must be filed within two months of the USPTO’s Notice of Abandonment of the Trademark Application.
Examples of requirements associated with the filing of Petition to Revive an abandoned Trademark Application in the USPTO are:
Received Petition Type 1: Office Action
This petition type indicates no response was filed or it was filed untimely. To address the Office Action, you will need to include in your request:
- Petition fee (one for each application)
- A statement that the delay in filing a response was unintentional, signed by someone with firsthand knowledge of the facts.
- A complete response to the outstanding office action signed by the applicant or, if the applicant is represented by an attorney, signed by their attorney.
- NOTE: If the abandonment was entered after a final office action, the response must include either a notice of appeal or a statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).
Received Petition Type 2: Notice of Allowance received
This petition type indicates that no statement of use or extension request was filed, or they were filed untimely. To address a Notice of Allowance, you must include in your request:
- Petition fee (one for each application)
- A statement that the delay in filing a Statement of Use or extension request was unintentional, signed by someone with firsthand knowledge of the facts.
- The required fees for all extension requests that have become due since the Notice of Allowance was issued.
- A Statement of Use, an extension request, or (in a multiple-basis application) an amendment deleting the section 1(b) basis or deleting all of the intent to use goods/services and seeking registration based on an already existing section 1(a) and/or section 44(e) basis.
What Happens Next?
If Your Request is Granted
If the USPTO grants the Petition to Revive, your abandoned Trademark Application is reinstated to “pending” status.
In your situation, if your company’s petition to revive two of its abandoned Intent-to-Use Applications is granted, your company’s pending Intent-to-Use Applications would pre-date your competitor’s filings. With regard to each company’s Intent-to-Use Applications, your company’s procedural rights associated with your Intent-to-Use Applications would be superior to your competitor’s procedural.
If Your Request is Not Granted
If the USPTO does not grant your Petition, your competitor would have superior procedural rights. Depending on the facts, even if your request is denied, your company may have other legal actions that can prevent your competitor from using trademarks created by your company.
If your enterprise needs legal assistance procuring/managing/enforcing your intellectual properties, please contact Business Patent Law, PLLC.
Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.
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