If you are attempting to register a trademark with the US Patent and Trademark Office (USPTO), it is possible that you will receive notice from the USPTO that your application has been rejected. An official rejection will be delivered as a Certificate of Rejection. However, there are other “rejections” that are not quite as official such as when the USPTO deems an application to be abandoned. In either type of circumstance, the USPTO will cease working on the application. If the application is deemed abandoned, then the application will persist on the USPTO database in a sort of “limbo.”

There are several alternative actions that can be taken depending on why and how an application has been rejected or deemed abandoned. The easiest cases are those where inaction on the part of the applicant has caused the problem. Abandonment of an application is generally the result of not responding to a USPTO Office Action or other requests for information OR a result of missing a deadline (and not seeking an extension of time).

In these circumstances, the solution is to file a request (and pay the appropriate filing fees) to reinstate the application and for time to respond to the Office Action or provide the missing information. As one example, if the application is an intent-to-use application, specimens of use must be filed within the deadline after receipt of the Notice of Allowance. Extensions of time can be requested. Failure to file the specimens of use (or seek an extension) will result in the denial of the application. That is, the application will be deemed abandoned. The solution is to petition to revive the application, ask for more time, and then submit the specimens of use.

This solution may not always succeed. As another example, failure to respond to an Opposition will ultimately result in the USPTO deeming an application abandoned. But, given the strict deadlines for responding to an Opposition, it may be impossible to revive an application if too much time has elapsed.

In some cases, the USPTO issues a Final Office Action that is an official rejection of the application. In those cases, depending on the reason for the rejection, there are several options, including:

• Ask for a reconsideration of the rejection from the USPTO — this generally requires providing the Examining Attorney with some new arguments, evidence, and a possible amendment to the application that might reverse the rejection
• File an appeal to the USPTO’s Trademark Trial and Appeal Board (TTAB) — appeals generally argue that the Examining Attorney’s rejection was in error based on a misinterpretation of the law or facts within the application
• If the rejection resulted from a pre-existing trademark that is blocking registration (for reasons like being confusingly similar), an option is to seek a cancellation of the “blocking” trademark with the TTAB OR to attempt to negotiate a co-existence agreement with the owner of the “blocking” trademark
• Start over and prepare a new application that, presumably, corrects the problems that led to the rejection
• Continue using the trademark in commerce without registration — this can be legally risky depending on the circumstances

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.