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:
- Missed deadlines for responding to an office action or suspension inquiry
- Missed deadlines for filing a Statement of Use or extension request — this is the most common reason that intent-to-use applications are deemed abandoned
- Failure to pay relevant USPTO filing fees
- Missed deadline for responding to a partial refusal or other USPTO requirements like requests for further information
- Incomplete responses to USPTO correspondence and/or requests for further information
- Failure to respond to an opposition — although this can also lead to a denial
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.
