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My trademark application was abandoned: how to revive it before the window closes

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You can usually revive an application abandoned for a missed deadline by filing a petition to revive within two months of the Notice of Abandonment, stating that the delay was unintentional. The USPTO petition fee is $250, and the petition has to include the response you didn't file, so the work you skipped still has to be done.

If you never got a Notice of Abandonment, the window is two months from when you learned about it, and no later than six months after the abandonment date shown in the USPTO's records. After six months, a petition generally won't work, and the usual path is a new application.

Why applications get abandoned

Most abandonments come from one of three missed deadlines:

  • An Office Action went unanswered. The response period is three months from the issue date, with one three-month extension available for a fee. Miss it and the application is abandoned.
  • A Statement of Use or extension wasn't filed. Intent-to-use applications have their own deadline after the Notice of Allowance. Miss that and the application is abandoned too.
  • A response was filed, but it was incomplete. If the response didn't answer everything, or the examining attorney treated it as incomplete, that can also end in abandonment. This one is handled differently, as you'll see below.

The first two are the classic cases for a petition to revive. The third isn't.

The deadlines, in plain terms

If you got a Notice of Abandonment: two months from its issue date.

If you didn't get one: two months from the day you learned the application was abandoned, and no later than six months after the abandonment date in the USPTO's status system.

If only some goods were dropped: when an application is abandoned only as to some goods or services, the clock runs from the examiner's amendment that deleted them.

Here's an example. A Notice of Abandonment issued on September 2 means the petition is due by November 2. That isn't a soft target. Count from the issue date on the notice, not the day you read it.

What the petition has to include

For an application abandoned because an Office Action went unanswered, the USPTO's revival page lists what's required:

  1. A statement that the delay was unintentional, signed by someone with firsthand knowledge of the facts.
  2. The petition fee. It's $250 when filed electronically.
  3. A statement about whether you received the Office Action.
  4. If you received it, a complete, signed response to every issue in the Office Action, plus any extension fee that applies.
  5. If it was a final Office Action, either a notice of appeal or a statement that you're not filing one.

For an application abandoned because a Statement of Use or extension wasn't filed, the petition includes the unintentional-delay statement, the fee, and one of: the Statement of Use with its fee, the missed extension requests with their fees, or a request to cancel and reissue the Notice of Allowance if you never received it.

"Unintentional" is a lower bar than it sounds. You don't have to prove an emergency. You do have to be able to sign the statement truthfully. If you decided on purpose to let the application lapse, a revival petition isn't the tool for that.

The petition is the easy part

The petition form takes a few minutes. The response that has to go with it doesn't.

If the Office Action you missed was a simple requirement, the response may be quick. If it was a refusal, such as likelihood of confusion or descriptiveness, the response is a legal argument with evidence, and it has to be complete when the petition goes in. That's the same work you'd have done on time, now squeezed into two months.

So don't spend the first six weeks on the petition and the last two on the argument. Plan the response first.

The traps that end revival

Abandoned for an incomplete response after a final action. If you asked the examining attorney to reconsider a final refusal, didn't also file an appeal, and the request was denied after the appeal deadline passed, the application is abandoned for an incomplete response. A petition based on unintentional delay isn't available in that case. The remedy is a petition to the Director, which is granted only for clear error, abuse of discretion, or substantial compliance. That's a much harder standard.

Missing it twice. If a petition is granted and you then miss the new deadline, the application goes abandoned again. You can petition again, but you can't claim a second time that you never received the Office Action.

Waiting past six months. An application abandoned for more than six months generally can't be revived by an ordinary petition. The USPTO only considers it in extraordinary situations where no one else would be harmed, and it recommends filing a new application instead.

Blaming email. Not receiving an emailed notice isn't a basis for reinstating the application as a USPTO error. Keep the email on your application one you actually check.

Revive or refile?

Reviving keeps your original filing date, which matters if someone else has filed for something similar since. Refiling costs a new $350 per class and starts the examination line over.

But if the Office Action you missed was a refusal you can't overcome, reviving just buys you the same refusal again. In that case, the money may be better spent on a new filing with a name that clears, or on a different version of the mark. I go through how refusals get answered in the article on Office Action responses, and the filing mistakes that can't be fixed later in the article on where DIY applications go wrong.

How I handle these

Revival work is mostly an Office Action response on a shorter clock. At Citrus Legal, Office Action responses for applications filed anywhere, including ones you filed yourself, start at $425 for procedural issues and $1,600 for substantive refusals. They're flat fees, quoted in writing after I read the file. The USPTO petition fee is separate. I'm the only attorney, and nothing is outsourced.

If starting over is the better call, one mark from search to filing is $2,600 flat, or three payments of $950, plus the USPTO fee.

If your application was abandoned and you're inside the window, you can see how I take over existing applications on the Office Action response page, and if a new filing makes more sense, the start page explains how that works.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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