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Applications to register trademarks are filed and reviewed by the US Patent and Trademark Office (USPTO). In the very broadest sense possible, there are three potential results that can flow from the filing of a trademark registration application — approval, denial, and abandonment.
Abandonment means that barring some action to revive the application, the application is no longer “live” and cannot move forward. That is, the USPTO will not take further action on the application, and the application will not be rejected or approved.
Importantly, abandonment also means that the application no longer “blocks” another application for the same/similar trademark from a different applicant. Generally, a pending trademark application will have priority over a later-filed application for the same/similar trademark. This is because a given trademark must be unique. Indeed, a legal requirement of trademark registration is that the proposed trademark NOT be the same as or confusingly similar to an already existing trademark. From the standpoint of the USPTO, an abandoned application for a proposed trademark is no longer a bar to a later-filed competing proposed trademark that is the same or confusingly similar.
How does one know if a trademark application has been abandoned or deemed abandoned? Basically, the USPTO will send correspondence to the application called a Notice of Abandonment to notify the applicant that the application is now deemed abandoned. The USPTO will also place an abandonment code on the Trademark Status and Document Retrieval (TSDR) system.
Abandonment of an application for trademark registration can occur in many different ways, and most of these result from inaction.
First, the applicant can take affirmative and decisive action to voluntarily abandon a trademark. As an example, the applicant can have its trademark attorney send correspondence to the USPTO Examining Attorney and state that the applicant wishes to abandon the application. This is a form of withdrawing the application, and the USPTO will, thereafter, deem the application abandoned.
However, as noted, most abandonments occur through inaction. These include:
Abandoned applications CAN be revived. This is done by sending a written petition — a request — to the USPTO to revive an application. If approved, the application will be “taken up” from where the USPTO left off. If denied, there are possible ways of appealing that denial, but the easier and less costly path is to start over and refile the application.
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.
Abandonment of a trademark application is a common and often preventable outcome that signals the end of the application’s forward progress — at least temporarily. For applicants who discover their application has been abandoned, understanding why it happened, what legal status the application now holds, and what steps are available to revive or replace it is essential to protecting brand rights. For competitors watching a rival’s pending application, an abandoned status creates new strategic opportunities.
The USPTO’s Trademark Status and Document Retrieval (TSDR) system is the public-facing tool for tracking the status of trademark applications. When an application is deemed abandoned, the USPTO places one of several abandonment status codes on the TSDR record. Common abandonment codes include “602 — Abandoned — Failure to Respond or Late Response,” “625 — Abandoned — Failure to File Statement of Use or Extension Request,” and “631 — Abandoned — Failure to Respond to Final Office Action.” Each code reflects a different cause of abandonment and points toward different potential revival strategies.
The TSDR record also contains the entire prosecution history of the application — every Office Action, every applicant response, every notice issued by the USPTO. Reviewing this record is the starting point for any abandonment analysis. The prosecution history will show what went wrong and when, which is necessary information for assessing whether revival is feasible.
An applicant can voluntarily abandon a trademark application by submitting a signed “Express Abandonment” request to the USPTO through the TEAS system. Express abandonment is sometimes strategically chosen — for example, when the applicant has decided to rebrand, when the mark cannot overcome a cited prior registration, or when continuing the application would be more costly than beneficial. Express abandonment does not create any negative legal consequences beyond losing the pending application.
Involuntary abandonment — which is far more common — results from procedural failures. The most frequent causes are: missing the deadline to respond to an Office Action (currently three months from the Office Action date, extendable to six months); failing to file a Statement of Use or extension request after receiving a Notice of Allowance on an intent-to-use application; failing to pay required fees; or failing to respond to an opposition proceeding within required deadlines. Each of these failures can be avoided with proper docketing and attention to USPTO correspondence.
Under 37 C.F.R. § 2.66, an applicant may petition to revive an abandoned application if the abandonment was unintentional. The petition must be filed within two months of the date the USPTO issued the Notice of Abandonment, though the USPTO may accept petitions filed outside this window upon a showing of good cause or unintentional delay. The petition must include:
If the USPTO grants the petition, the application is revived from where it left off. The examining attorney will then review the application — including the belated response — and either issue registration or a new Office Action. Revival restores the application’s original filing date, which is critical for priority purposes: the revived application retains its position in the queue relative to later-filed competing applications that might have been filed after the original abandonment.
If a revival petition is denied by the USPTO, the applicant may file an extraordinary petition under 37 C.F.R. § 2.146 requesting reconsideration of the denial. Extraordinary petitions must demonstrate that the USPTO’s denial was legally in error. They are not an opportunity to introduce new facts about the circumstances of abandonment; rather, they are legal arguments that the USPTO misapplied the standard for granting revival petitions.
If both the revival petition and extraordinary petition are denied, the practical option is to file a new trademark application. A new application will have a new filing date, losing priority over any competing applications filed in the interim. If a competitor filed a confusingly similar mark after the original application’s filing date but before the new application’s filing date, that competitor’s application may now have superior priority. This is one of the most concrete harms caused by inadvertent abandonment.
An abandoned trademark application loses its role as a “blocking mark” in the USPTO examination process. Under USPTO practice, a pending application for a mark that is the same or confusingly similar to a later-filed application will cause the later application to be suspended pending the outcome of the earlier application. Once the earlier application is abandoned, the later application is no longer blocked and may proceed to registration.
For businesses monitoring competitors’ trademark filings, tracking when a competing application goes abandoned — and then promptly filing a new application — can be a legitimate strategy for acquiring trademark rights that would otherwise have been unavailable. Trademark watch services and regular monitoring of the TSDR database are standard tools for this purpose.
Note, however, that abandonment of an application does not eliminate the applicant’s common law trademark rights in the mark if they have been using it in commerce. A business whose application was abandoned but who continues to use the mark retains common law rights in the geographic areas of use — those rights just do not have the benefits of federal registration.
The trademark attorneys at Revision Legal handle applications from filing through registration, including responding to Office Actions, filing Statements of Use, and pursuing revival petitions for abandoned applications. Contact us if your trademark application has been abandoned or if you need help monitoring and responding to competitor trademark filings.
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