Trademarks are important assets for businesses, serving as identifiers of the source and quality of goods or services. However, trademarks can sometimes fall into "abandoned" status due to missed deadlines, incomplete filings, or oversight. Fortunately, the United States Patent and Trademark Registration Office (USPTO) provides mechanisms to revive abandoned trademarks under certain conditions.

Understanding Trademark Abandonment

A trademark is considered abandoned when the owner fails to meet critical deadlines or stops using the mark in commerce without intent to resume. The USPTO may declare a trademark filing abandoned if:

1. Failure to Respond to an Office Action – The applicant does not reply to an examiner’s refusal or request for additional information within the stipulated timeframe (typically three months)
2. Missed Statement of Use (SOU) Deadline – For intent-to-use applications, the applicant must file an SOU within six months of a Notice of Allowance or request an extension. Missing this deadline results in abandonment.
3. Non-Renewal – Registered trademarks require periodic maintenance filings (e.g., between the 5th–6th and 9th–10th years). Failure to file these documents leads to cancellation
4. Non-Use in Commerce – If a trademark is not used for three consecutive years, it may be deemed abandoned unless the owner can prove intent to resume use

Legal Basis for Revival

The USPTO allows revival of abandoned applications if the lapse was unintentional. Key legal provisions include:

• 37 C.F.R.  – Permits revival if the delay was unintentional and the petition is filed within two months of the Notice of Abandonment (or up to six months if no notice was received) 
• Trademark Manual of Examining Procedure (TMEP) 1714–1714.01(g) – Outlines procedural requirements, including fees and documentation 

Steps to Revive an Abandoned Trademark

1. Determine the Reason for Abandonment

• Check the Trademark Status and Document Retrieval (TSDR) system to confirm the abandonment date and cause (e.g., missed Office Action response or SOU deadline) 

2. File a Petition to Revive

• For Missed Office Action Deadlines: Submit:
  • A completed Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action form.
  • A statement of unintentional delay (signed by someone with firsthand knowledge).
  • A complete response to the Office Action (if applicable) 
• For Missed SOU Deadlines: Submit:
  • A Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request.
  • The SOU or extension request (with fees).
  • A statement of unintentional delay 

3. Submit Supporting Documentation

• Include proof of USPTO error (if applicable), such as evidence of timely filing or incorrect correspondence addresses 
• For long-abandoned applications (beyond six months), extraordinary circumstances (e.g., natural disasters) must be proven 

4. Await USPTO Decision

• The USPTO reviews petitions within weeks to months. If approved, the application resumes processing. If denied, the only option is to refile 

Challenges and Considerations

• Strict Deadlines: Petitions must be filed within two months of abandonment (or six months if no notice was received). Late filings are rarely granted 
• Costs: Revival fees range from 150–150–450, plus additional filing fees (e.g., SOU or extension requests) 
• Legal Assistance: While not mandatory, hiring a U.S.-licensed trademark attorney is advisable, especially for complex cases

Alternatives to Revival

If revival is impossible (e.g., due to excessive delays), applicants must:

• Reapply: File a new application, which requires a fresh search and examination process 
• Common Law Rights: Using the mark in commerce without registration offers limited, region-specific protections

International Context

In jurisdictions like India, trademark renewal and trademark restoration follows similar principles but involves:

• Filing Form TM-13 within one year of expiration (with restoration and renewal fees) 

Conclusion

Recovering an abandoned trademark is feasible if the lapse was unintentional and the petition is filed promptly. By adhering to USPTO procedures filing the correct forms, paying fees, and providing a sworn statement applicants can revive their trademarks and safeguard their brand identity. Proactive monitoring of deadlines and legal counsel can prevent abandonment, safeguarding uninterrupted trademark protection