WTR and Eric Perrott Discuss the USPTO’s Accidental Abandonment of Hundreds of Trademarks

On December 2, 2024, the USPTO “inadvertently” abandoned hundreds of trademark applications due to a technical error. The mistake was found by Gerben IP’s Eric Perrott after the affected applicants received unwarranted notices of abandonment from the government agency.

World Trademark Review spoke to Eric Perrott about the potential impact the USPTO’s mistake could have on the affected applicants.

While the USPTO is quickly working to resolve the issue and correct what the agency is calling a “system error,” Eric Perrott, partner at Gerben IP, is concerned about the potential future implications for the affected applicants. He was the first the to notice the error and posted about it on LinkedIn, warning other attorneys about the notice of abandonment, which was only sent to the trademark applicants and not their attorneys.

“I have no idea how something like this happens, but having the client accidentally receive an official USPTO email that their trademark application is abandoned is absolutely inexcusable,” he said.

Perrott understands that technical issues can happen and that an “unexpected tab in a line of code or an errant click” can have unexpected consequences. However, he believes an agency such as the USPTO needs to be aware of the severe impact such a mistake can have on brand owners.

“An undetected abandonment of an ‘intent-to-use’ application could be catastrophic for an applicant relying on their priority date being their application date,” he warns. “I’ve had situations where trademark priority was decided by less than a day. Therefore, if the USPTO does not quickly reinstate all of these, there could be a serious loss of rights for applicants not paying attention. And while the USPTO has a petition to the director that is free-of-charge when it’s a USPTO error, so all of these can be reinstate for free if the USPTO misses any when automatically reinstating, it is still alarming.”

While it appears that the USPTO realized and began correcting the mistake within 24 hours, Perrott argues that the agency needs to make the reinstatement clear in case of any future disputes or confusion. He references an impacted Marvel trademark application and explains: “In that application, Marvel clearly filed extensions, but the USPTO issued an abandonment notice. As of this morning, it now says ‘reinstated’ but there’s no corresponding prosecution entry or explanation.”

Perrott recommend that all attorneys “pay very close attention to abandonment notices.” He puts together a weekly docketing report outlining all abandoned filings. “Our staff than double checks the abandonment notices daily and the docketing report weekly to make sure they were OK to abandon. It’s tedious but absolutely necessary, as abandonment can have so many consequences.”

Moving forward, Perrott urges the USPTO to reinstate the affected applications with no required action by the applicant. He would also like to see the USPTO clarify what caused the issue and what the agency is doing to ensure that it doesn’t occur again.

Source: Lince, Tim. https://www.worldtrademarkreview.com. “’Absolutely inexcusable’: USPTO criticised after hundreds of trademark applications mistakenly abandoned”. 3 December 2024.