To keep federal trademark applications and registrations “alive,” trademark owners are required to timely respond to notices from the United States Patent and Trademark Office, including responding to Office actions within six months, or filing statements of use or post-registration filings in the allotted timeline. A limited number of extensions of the deadline may be available, depending on the filing. If an applicant/registrant does not meet these deadlines, applications are considered abandoned (in full or in part, depending on the circumstances), and registrations may be cancelled, with the USPTO updating its records accordingly. In the U.S., abandonment or cancellation by the USPTO doesn’t necessarily mean a complete loss of rights, as there are some mechanisms available for bringing trademark applications and registrations back from the dead, but the USPTO is strict about these deadlines. That is because applicants (and USPTO examiners) rely on the accuracy of the USPTO’s records to determine whether prior applications or registrations exist on the registry, and the status of a potentially conflicting application or registration is taken into consideration when evaluating filing a new trademark application for a similar mark.
The USPTO is considering proposed amendments to the rules around reviving or reinstating trademarks that have been abandoned or canceled, and other petitions to the director, which have been codified in Part 2 of Title 37 of the Code of Federal Regulations. Currently, applicants can file one of the following within two months of an application’s abandonment: (1) a petition to revive—if the application was unintentionally abandoned; or (2) a request for reinstatement—if the application was abandoned due to USPTO error (e.g., lost or mishandled documents). Requests for reinstatement are also available to registrants with proof that a USPTO error caused a registration to be canceled or expired. There are specific circumstances under which those requests are allowed. Petitions to the director, which can cover a wide variety of issues (most of which are outside the scope of this article, but typically include an objection to the USPTO’s handling of a particular matter because it did not follow procedure), can also be filed by applicants/registrants, but are not typically used for abandoned/canceled marks.
The proposed amendments to the Code of Federal Regulations are merely an effort to codify the rules set out in the Trademark Manual of Examining Procedure, so from a practical point of view, the process for filing revivals, reinstatements and petitions remains the same. The focus of the proposed “changes” is: (1) the onus on brand owners to diligently check the status of their applications and registrations, and timely request corrective action; (2) the prohibition on filing more than one consecutive petition to revive for an application, where the applicant alleges it didn’t receive an Office action and (3) clarifying that there is no fee for filing a request for reinstatement and describing the type of proof required to support such a request.
By all accounts, little would change for brand owners under the USPTO’s newly proposed rules. But this serves as a good reminder that brand owners should regularly monitor the status of their trademark applications/registrations and keep their contact information current with the USPTO to avoid dealing with the hassle of trying to bring their trademark applications and registrations back from the dead.