After filing your trademark application, it will undergo examination by the USPTO, and you, as the applicant, may be required to take certain actions. For instance, if the examiner has issued a provisional refusal for your trademark application, you are required to respond. Likewise, if you have filed an intent-to-use application and received a Notice of Allowance, you must submit a Statement of Use. In case you fail to do so and the deadline is not extended, the application will be considered abandoned, and you will receive a Notice of Abandonment.
The main reasons for the trademark application abandonment
As outlined earlier, the main reasons include:
- Failure to respond to an Office Action. An Office Action is a notification from an examiner that your application contains deficiencies. These may be formal, for example, if the domicile and substantial presence were not specified when the application was filed. Another example is the existence of similar trademarks that were filed or registered prior to your application. In this case, you have three months to respond to the Office Action or extend the deadline for another three months. Failure to do so may result in your trademark application being considered abandoned.
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- Failure to file a Statement of Use. If you have filed an intent-to-use application, for which the examiner has issued a Notice of Allowance, you have 6 months to file a Statement of Use with examples (specimens) of such use. If you have not yet started using the trademark, you can extend this period. If, at this stage, you have not submitted a statement of use and have not extended the filing period, your application will be considered abandoned.
Petition to Revive Abandoned Trademark Application
Receiving a Notice of Abandonment does not necessarily mean you must file a new application. In certain cases, you may be able to revive the abandoned trademark application.
A petition to revive must state that the delay was unintentional, and a fee must be paid for its filing ($250 regardless of the number of classes in the application). In addition, if the trademark was abandoned on the basis of failure to file a Statement of Use, the corresponding fees must be paid.
Deadlines for Filing a Petition to Revive
The petition must be filed:
- Within two months from the date of issuance of the Notice of Abandonment, or
- Two months after the date of actual knowledge of the abandonment, and
- No later than six months after the corresponding abandonment entry in the electronic application system.
If the petition to revive is filed after this date, it will be denied. In that case, the applicant may file a new trademark application, pay the application fee, and await examination.
Avoiding Trademark Application Abandonment
The failure to meet the relevant deadlines is the reason for the application abandonment. If you filed the trademark application by yourself, ensure you regularly check the email address associated with the filing.
If you have filed the trademark registration application yourself, consider regularly checking the email address you provided when filing. If a trademark attorney filed the application on your behalf, wait for a corresponding notification from them. You can also consider regularly visiting the USPTO website and checking the status of your application.
When applying for trademark registration with Ortynska Law, trademark attorney Mariya Ortynska will send you all communications regarding your trademark and remind you of the relevant deadlines and the possibility of extending such deadlines. To begin filing, schedule a consultation with Mariya Ortynska in a couple of seconds.