Petition to Revive Information Sheet

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.

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.  37 C.F.R. §2.66(a)(1).

If you did not receive the notice of abandonment, then you must file the petition no later than 2 months from the date you learned of the abandonment, but in no case more than 6 months after the date the trademark electronic records system was updated to indicate that the application was abandoned. 37 C.F.R. §§2.66(a)(2) and 2.146(d)(2). 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, which is available 24 hours a day, 7 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.

Reinstatement of an Abandoned Application

In limited situations, an applicant may be entitled to reinstatement without a fee if the applicant can provide evidence that the application was abandoned due to a USPTO error.  The deadlines for filing a request for reinstatement are the same as for filing a petition to revive.  However, you must include with your request: (1) proof that the necessary response to an Office action, SOU, or extension request was timely filed; (2) proof of actual receipt by the Office of a response to an Office action, an SOU, or an extension request; (3) proof that the Office processed a fee in connection with the filing at issue; (4) proof that the Office sent the Office action or NOA to an address that is not the designated correspondence address; or (5) other evidence, or factual information supported by a declaration under §2.20 or 28 U.S.C. 1746, demonstrating Office error in abandoning the application. 37 C.F.R. §2.64; 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 §609.03.  Failure to receive the Office action or NOA that was emailed to you, is not a basis for reinstating the application.

TEAS PETITION FORMS AVAILABLE ON THE WEB

You may file a Petition to Revive an abandoned application through the USPTO website.  When the application is abandoned for failure to file a response to the examining attorney's Office action, use form 1 “Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action.” When the application is abandoned for failure to 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 (NOA), use form 2 “Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request.”

There is also a form to petition to revive the abandoned application after an NOA has issued if you are requesting to delete all of the ITU goods/services in the application; or to delete the ITU basis in the application and rely on another basis already of record in the application.  Use form 13 “Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services after NOA.”

MAILING Petition Papers:

Filing on paper is not recommended.  However, if you are unable to file using the electronically available form, you may submit your petition on paper with all of the necessary requirements identified below.  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:

_______________________________

Signature

_______________________________

Print Name of Signatory

_______________________________

Date

Four Types of Petitions – Requirements

Petition Type 1: Office Action Received (No Response Filed or Untimely Response Filed)

  1. Petition fee per application - $100 if filed electronically, $200 if filed on paper
  2. A statement that the delay in filing a response was unintentional, signed by someone with firsthand knowledge of the facts.
  3. 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 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).

Petition Type 2: Notice of Allowance Received (No SOU or Extension Request Filed or Untimely SOU or Extension Request Filed)

  1. Petition fee per application - $100 if filed electronically, $200 if filed on paper.
  2. A statement that the delay in filing a SOU or extension request was unintentional, signed by someone with firsthand knowledge of the facts.
  3. The required fees for all extension requests that became due since the NOA issued.
  4. An SOU, 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. 

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 Not Received

  1. Petition fee per application - $100 if filed electronically, $200 if filed on paper.
  2. A statement that the delay in filing a response was unintentional because the Office action was not received by applicant or the attorney of record, signed by someone with firsthand knowledge of the facts.

Advisory: If you assert that the unintentional delay in responding is based on non-receipt of an Office action, you may not assert non-receipt of the same Office action in a subsequent petition. 

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. 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 §609.03.

Petition Type 4: NOA Not Received

  1. Petition fee per application - $100 if filed electronically, $200 if filed on paper.
  2. A statement that the delay in filing an SOU or extension request was unintentional, signed by someone with firsthand knowledge of the facts
  3. One of the following:
  • An SOU and the required fees for the number of requests for extensions of time to file an SOU that the applicant should have filed if the application had never been abandoned;
  • An extension request and the required fees for the number of requests for extensions of time to file an SOU that the applicant should have filed if the application had never been abandoned;
  • A statement that the applicant did not receive the NOA and a request to cancel the NOA that was not received and issue a new NOA; or
  • In a multiple-basis application, an amendment deleting the section 1(b) basis and seeking registration based on section 1(a) and/or section 44(e) of the Act. 

Advisory:  If you assert that the unintentional delay in responding is based on non-receipt of an NOA, you may not assert non-receipt of the NOA in a subsequent petition.   

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. 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 §609.03.

Timeliness Issues

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, the petition must be filed no later than 2 months from the date you learned of the abandonment, but in no case more than 6 months after the date the trademark electronic records system was updated to indicate that the application was abandoned. 37 C.F.R. §§2.66(a)(2) and 2.146(d)(2).  If you are unclear about the timeliness of your petition, you may speak to a paralegal in the Petitions Office, (571)272-8950.
  • A petition CAN be filed before the application has been officially abandoned in the USPTO records. If you know you are late in responding, even if it's just a day late, you can file your petition.

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 asking you to submit a 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 you believe that a situation is extraordinary, you may speak to a paralegal in the Petitions Office, (571) 272-8950.
  • You are encouraged to use the "Response to Petition to Revive Deficiency Letter" online response form, but you must 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.