Reviving an Abandoned Trademark Application:
A trademark application is considered "abandoned" when the United States Patent and Trademark Office (USPTO) does not receive one of the following timely filed documents: (1) a response to an examining attorney's Office action; or (2) a statement of use (SOU) or request for an extension of time to file a statement of use (extension request), in response to a notice of allowance (NOA). 37 C.F.R. §2.65. "Abandoned" means that the application is no longer pending and thus cannot mature into a registration. You may submit a petition to revive an abandoned application and request that the application be returned to active or pending status if the delay in responding to the Office action, or the delay in filing an SOU or extension request, was unintentional. 37 C.F.R. §2.66. A Petition to Revive cannot be filed for a cancelled or expired registration. See TMEP Chapters 1600 and 1700 or contact the Petitions Office at 571-272-8950 for further information.
An applicant who does not receive an Office action or Notice of Allowance is not entitled to reinstatement without a fee unless the USPTO sent the action to the wrong address due to a USPTO error, i.e., either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the mailing date of the action. TMEP §§717 and 1712.01. When an applicant agrees to receive correspondence by e-mail, the applicant is responsible for maintaining a current e-mail address and notifying the Office of any change of address. TMEP §603.03.
Deadline for Filing a Petition to Revive:
If you received the notice of abandonment, then you must file the petition no later than 2 months from the mailing date of that notice.
If you did not receive the notice of abandonment, then the deadline for filing the petition is 2 months from the date you learned of the abandonment, rather than two months from the mailing date of the notice of abandonment. However, this more lenient deadline will apply only if you were diligent in prosecuting the application. To be considered diligent, you must have checked the status of the application every 6 months since the filing date of the application. 37 C.F.R. §§2.66(a)(2) and 2.146(i). If a status inquiry reveals that a paper was not received, or that some other problem exists, corrective action should be promptly requested in writing.
Applicants and registrants can check the status of an application or registration using the Trademark Status and Document Retrieval (TSDR) database at http://tsdr.uspto.gov/, which is available 24 hours a day, seven days a week. The party should print the TSDR screen and place it in the party's own file, in order to have a record of the status inquiry and the information learned.
These deadlines are strictly enforced.
TEAS PETITION FORMS AVAILABLE ON THE WEB
You may file a Petition to Revive an abandoned application through the USPTO website at http://www.uspto.gov/trademarks/teas/petition_forms.jsp. There are two different forms available. One should be used when the application is abandoned for failure to file a response to the examining attorney's Office action. The other should be used when the application is abandoned for failure to timely-file a Statement of Use (SOU) or Request for an Extension of Time to File a Statement of Use (Extension Request), in response to a Notice of Allowance. The forms provide step-by-step instructions. Please visit the website for further information.
MAILING Petition Papers:
The filing date of a document in the USPTO is the date of receipt in the Office, not the date of deposit in the mail. 37 C.F.R. §2.195. However, a petition that is mailed to the USPTO before the expiration of the deadline discussed above will be considered to have been timely filed if (1) it is properly addressed and deposited with the U.S. Postal Service with postage sufficient for first class mail, and (2) the petition includes a Certificate of Mailing that identifies the date the petition was mailed, and the address to which it was mailed. 37 C.F.R. §2.197(a). You are encouraged to use a Certificate of Mailing (see sample below) to ensure the timeliness of the petition. Please keep a photocopy of the petition and the signed certificate. If the petition is filed and then lost, a photocopy of the petition and the Certificate of Mailing may help to establish that the petition was timely filed.
The following is a sample Certificate if Mailing:
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail with postage prepaid in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on the date shown below:
Print Name of Signatory
Three Types of Petitions - Requirements
Petition Type 1: Office Action Received (No Response Filed or Untimely Response Filed)
- $100 petition fee per 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. If the abandonment is after a final Office action, a proper response is required. The only proper response after a final Office action is either compliance with all requirements or a notice of appeal. Therefore, a notice of appeal may be required to be submitted with the petition.
Petition Type 2: Notice of Allowance Received (No SOU or Extension Request Filed or Untimely SOU or Extension Request Filed)
- $100 petition fee per application.
- A statement that the delay in filing a SOU or extension request was unintentional, signed by someone with firsthand knowledge of the facts.
- The required fees for all extension requests that became due since the NOA issued.
- Either a SOU or the last extension request that was due.
Advisory: Filing a Petition to Revive an abandoned application does not stay or suspend the time for filing a SOU. During the pendency of the petition, you should file a SOU or any further extension requests that come due. Also, a petition will not be granted if it results in a SOU being filed more than 36 months after the issuance date of the NOA.
Petition Type 3: Office Action or NOA Not Received
- $100 petition fee per application.
- A statement that the delay in filing a response, or SOU or extension request, was unintentional because the Office action or NOA was not received by applicant or the attorney of record, signed by someone with firsthand knowledge of the facts.
Advisory: You must maintain an accurate correspondence address with the USPTO. All changes must be made in writing, or through the electronic Change of Correspondence Address Form, available at http://www.uspto.gov/trademarks/teas/correspondence.jsp. When an applicant agrees to receive correspondence by e-mail, the applicant is responsible for maintaining a current e-mail address and notifying the Office of any change of address. TMEP §603.03.
PETITIONS AND REQUESTS FOR REINSTATEMENT MUST BE FILED WITHIN 2 MONTHS FROM THE MAILING DATE OF THE NOTICE OF ABANDONMENT
- The time for filing a Petition to Revive (or a Request for Reinstatement) is no later than 2 months from the mailing date of the Notice of Abandonment. The timeliness of the petition is critical and a petition will be denied if it is not timely.
- The applicant should determine the mailing date of the notice of abandonment by reviewing the date provided at the top of the notice.
- If the applicant did not receive their notice of abandonment or they are unclear about the timeliness of their petition, they should speak to a paralegal in the Petitions Office, (571)272-8950.
- A petition CAN be filed before the application has been officially abandoned in TSDR. If the applicant knows they are late in responding, even if it's just a day late, they can file their petition.
- Do not rely on the information in TSDR to determine the timeliness of the petition. The abandonment date can be found in the Prosecution History in TSDR. However, this date can be a couple of days off.
RESPONSES TO 30-DAY LETTERS MUST BE SUBMITTED WITHIN THE 30-DAY PERIOD
- In some cases, a petition is incomplete and a "30-day letter" will be sent to the Petitioner asking them to submit the fee or some other missing element of the petition. The time for responding to such a letter is 30-days from the mailing date of the letter and extensions are not granted, except in extraordinary situations. If an applicant believes that a situation is extraordinary, they should speak to a paralegal in the Petitions Office, (571) 272-8950.
- Applicants are encouraged to use the "Response to Petition to Revive Deficiency Letter" online response form available at http://www.uspto.gov/teas/eTEASpageD.htm, but they should wait 48-72 hours before responding if the Notice of Deficiency was sent by e-mail. For technical assistance with the online form, please e-mail TEAS@uspto.gov.
CERTIFICATES OF MAILING SHOULD BE USED FOR ALL RESPONSES SENT TO THE OFFICE THROUGH THE UNITED STATES POSTAL SERVICE (USPS)
The timeliness of a document sent to the office is based on the date it is received in the office unless a Certificate of Mailing under Trademark Rule 2.195 is used. Please note that a Certificate of Mailing cannot be used for filing new applications, , amendments to allege use, statements of use, request for extension of time to file a statement of us, Section 8 affidavits, Sections 8 and 9 combined filings, requests to change or correct addresses since all of these documents can be submitted through TEAS. Applicants should keep copies of all documents sent to the Office, including a signed copy of the Certificate of Mailing.
- Applicants often mistakenly think we are talking about Certified Mail. A certificate of mailing pursuant to our rules is a statement signed by the person mailing the letter attesting to the mailing of the letter.
- The following is a properly worded Certificate of Mailing under 37 C.F.R. §2.195:
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail postage prepaid in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451, on __________________ (Date).
Printed or typed name