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.

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).

These deadlines are strictly enforced.

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:

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, VA 22313-1451 on the date shown below:

___________________________________
Signature

____________________________________
Print Name of Signatory

____________________________________
Date

Three Types of Petitions - Requirements

PETITION TYPE 1 - Office Action Received (No Response Filed or Untimely Response Filed)

1. $100 petition fee per application.
2. A statement that the delay in filing a response was unintentional, signed by someone with firsthand knowledge of the facts.
3. A proposed response to the outstanding Office action.

PETITION TYPE 2 - Notice of Allowance Received (No SOU or Extension Request Filed or Untimely SOU or Extension Request Filed)

1. $100 petition fee per application.
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. The required fees for all extension requests that became due since the NOA issued.
4. Either an 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 an SOU. During the pendency of the petition, you should file an SOU or any further extension requests that come due. Also, a petition will not be granted if it results in an SOU being filed more than 36 months after the issuance date of the NOA.

PETITION TYPE 3 - Office Action or NOA Not Received

1. $100 petition fee per application.
2. 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/teas.