TMIN: Petitions


Part 11 of Trademark Information Network Series

Published on Apr 18, 2017

This video explains when you may file a "Petition to Revive" to bring an unintentionally abandoned application back to life. The video also discusses how to file the petition and what to include. WARNING: The failure to timely file the petition will result in the permanent abandonment of your application


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TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
Did you recently receive a Notice of Abandonment of your trademark application from the United States Patent and Trademark Office? Not sure what it means? Or what to do about it?

Stay tuned and we'll explain why your application might have been abandoned, as well as what options are available should you wish to revive it.

The first thing to understand is what the word "abandonment" means in the context of a federal trademark application. Specifically, it means that your trademark application is no longer active or pending and, therefore, no registration will issue.

It does not mean that you've given up any rights in your trademark, though. Common law rights exist apart from the federal trademark registration. If you would like to know more about this, you may want to hire a private attorney to assist you.

The Office sometimes refers to the status of applications as being "live" or "dead." Pending or active applications are live; abandoned applications are dead. If you've received a Notice of Abandonment, this means your application is dead. To register the mark in the dead application, you must either file a new application or try to bring the dead one back to life.

Most applications abandon for one of two reasons: either you submitted a document or form too late or you didn't even realize that one was due and so didn't file anything by the deadline. Other possible scenarios exist, of course, but this broadcast only covers these two situations of missing crucial deadlines.

If you find yourself in another situation, you may want to review Chapter 1700 in the Trademark Manual of Examining Procedure, available on the USPTO website. In particular, look at Section 1714 of the Manual.

If youve submitted a document or form late, you're probably not shocked that youve received a Notice of Abandonment. If you didn't even know a form was due, however, you might be surprised to learn that your application was abandoned. In any case, don't panic! But you must act promptly.

The USPTO has a procedure to bring your application back to life; it's called the Petition to Revive process. Over the next few minutes, we'll discuss the specifics of this process, as well as ways to prevent the abandonment of your application from happening again.

Before we take a look at the forms to use, take a look at your Notice of Abandonment and find the reason for the abandonment stated on that notice.

This will help you select the proper Petition to Revive form to use and you can also make sure that it has not been more than 2 months since the notice of abandonment issued. More than 2 months and you might be out of luck reviving your application.

The notice might state that your application became abandoned because a response to an outstanding Office Action was not received within the 6-month response period.

Or, the notice might state that a Statement of Use was due, but you failed to file either a Statement of Use or a Request of Extension of Time to File the Statement of Use before the deadline.

Either situation allows for revival of your application, as long as your delay was unintentional and you file a timely petition.

Now that you know why your application abandoned, let's discuss how to select, fill in, and file the Petition to Revive form. To begin, go to the Trademarks section of the USPTO.GOV website. All of the necessary petition forms are easy to find and file using the Trademark Electronic Application System (known as TEAS, T-E-A-S).

Simply click on the Petition Forms link and select the correct Petition to Revive for your situation: either "Failure to Respond Timely to Office Action" or "Failure to File Timely Statement of Use or Extension Request."

Your answers to the wizard questions will depend on why your application abandoned. Let's look at them one by one: Failure to File a Timely Response first, and then Failure to File a Timely Statement of Use.

Most applications become abandoned because an applicant does not respond timely, or at all, to an Office Action. An Office Action is an official USPTO letter that explains problems or other issues with your application that must be addressed before your trademark can register. You must respond to most Office Actions within 6 months, or the application is automatically abandoned by law. This abandonment is known as an Abandonment Due to a Failure to File a Timely Response.

If you received the Office Action, but did not respond to it, and your failure to file was unintentional, you may file a Petition to Revive using the form named "Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action." In the Petition form, you must answer the questions, pay the required fee, and include a response to the Office Action that addresses all of the issues in it.

If the USPTO issued a Final refusal of your application and you separately filed a Notice of Appeal with the Trademark Trial and Appeal Board, you should note this in your petition by checking the box in the form.

In contrast, if you never actually received the Office Action or Final Office Action, be sure to indicate this when answering the petition form wizard's questions.

If you did not actually receive the Office Action and you choose not to submit a response with the petition, then, when the petition is granted, the USPTO will re-issue the same Office Action and you may timely respond once you receive it.

Alternatively, you can speed the process up by reviewing the Office Action posted online and then submitting a response with your petition. To view the Office Action, simply go to the USPTO website and enter your serial number in the Trademark Status and Document Retrieval system, called TSDR.

The other common situation where an application becomes abandoned relates to Intent to Use applications and is a little more complicated than the first scenario. These types of applications require more forms than others, so the opportunity for missing deadlines is greater.

In Intent to Use applications, after your trademark publishes, you should receive a Notice of Allowance, which is a notice telling you that you must submit a Statement of Use within a certain time period. If you forget to submit the Statement of Use or forget to ask for an extension of time to submit the Statement of Use, your application will automatically become abandoned. If your failure to timely file the Statement of Use or Extension Request was unintentional and you didn't mean to abandon the application, then, in most cases, you may file a petition to revive, as long as you're eligible for another extension.

Filing this type of Petition to Revive is similar to the previously described petition type. Simply find the TEAS form for a "Petition To Revive Abandoned Application - Failure to File a Statement of Use or Extension Request."

Answer the form wizard's questions, pay the required fees, and submit the Statement of Use, the Extension Request, or both. Remember, however, that both the Statement of Use and the Extension Request have their own associated fees. So, when you file the Petition to Revive, you'll need to pay the Petition to Revive fee, plus the Statement of Use fee or Extension Request fee, or both.

If you did not receive a Notice of Allowance, indicate this when answering the form wizard's questions. The USPTO will re-issue the Notice of Allowance when the petition is granted, and this will set a new deadline for you to submit the Statement of Use or Extension Request.

Applicants often ask if they must pay a Petition to Revive fee even if they never received their Office Action, Final Office Action, or Notice of Allowance. The answer is "Yes." This is a processing fee and pays for the USPTO resources needed to process these documents and conduct legal review.

Also, once official USPTO correspondence has been sent to you at your stated address, the USPTO has done its job. So, you should regularly check your mailbox, e-mail In Box (including your Spam Folder), and the USPTO website for status updates and to see if anything has been sent to you. All official documents sent to applicants regarding their applications are available on the USPTO website through TSDR.

To help make sure that you never miss important correspondence from the Office, use the Change of Correspondence Address form on the USPTO website whenever your e-mail or physical address changes. The form allows you to quickly and easily update your e-mail address and other contact information.

I know that sounds like a lot of forms to file and fees to pay, but think about it this way: you're completing two steps all at once. The Petition to Revive can bring your application back to life, and the Response to Office Action, Statement of Use, or Extension Request puts your application back on track to where it would have been, had the application not gone abandoned.

Be aware: you must file the Petition to Revive within two months of the mailing date of the Notice of Abandonment. Two months can go by quickly. So be sure to be vigilant and check the status of your application on a regular basis using TSDR to avoid missing the revival deadline.

So, remember, if your application goes abandoned and you want to revive it, file a Petition to Revive within two months of the mailing date of the Notice of Abandonment. And, depending on your prosecution status, be sure the Petition includes all the required documents and statements; otherwise, your petition will be refused.

Also remember, even once revived, your application could abandon again if you miss a deadline in the future. So, be sure to check your application status every 3 to 4 months.

Feel free to replay this broadcast, read the printable transcript, and explore the USPTO.GOV's "Abandoned Applications" page for more information. And keep an eye out for more of these broadcasts throughout the website.

I'm Sandhya Mahajan, Trademark Information Network.

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