How to Respond to a Notice of Abandonment – Failure to Respond Timely to Office Action

By Eric Perrott, Esq.

One of the hardest parts of the trademark registration process is meeting all of the deadlines required by the United States Patent and Trademark Office. Failure to meet these deadlines may result in the permanent abandonment of your application. However, if you received a “Notice of Abandonment,” you still may have an opportunity to revive the application and save it from being permanently abandoned.

This article will share tips on what to do if you receive a Notice of Abandonment for your pending application.

Notice of Abandonment

A notice of abandonment is an official notice from the USPTO issued when an applicant does not properly respond to all of the USPTO Examining Attorney’s Office Action refusals.

The Notice will look like this:

During the application process, the USPTO assigns a government attorney called a USPTO Examining Attorney to each application. They review the application and issue an Office Action when they need additional clarifications, or if the Examining Attorney finds a confusingly-similar registration, finds the mark merely descriptive, or issues any other substantive refusal.

As of December 2022 USPTO rule change, when the Examining Attorney issues an Office Action, the Applicant has three months to respond. If they don’t, then the Examining Attorney will issue a Notice of Abandonment.

Trademark applicants historically had six months to respond to an Office Action. With the rule change, applicants can submit a one-time extension of time request for $125. If the extension is approved, the Applicant will have an additional three months to submit their response to the USPTO.

Can I still save the application?

There is a sixty-day period following the issuance of a Notice of Abandonment called the “Revival Period.” During this time, the applicant can file a Petition to Revive the application. However, it does not give the applicant any additional time to respond – the Applicant must file the Petition to Revive and respond to the Examining Attorney’s refusals to “save” the application. There is also a distinction between a “Non-final” refusal and a “Final” refusal. An Examining Attorney will issue a “Final” refusal if an applicant does not respond appropriately to a previously-issued “Non-final” refusal. When this happens, the applicant has six months from the issuance of a Final Office Action to appeal to the Trademark Trial and Appeal Board. After these six months, an appeal will no longer be timely, and the options of responding are limited.

What are the risks?

The most significant risk is missing the 60-day deadline. After the 60-day period, the trademark application will be permanently abandoned and cannot be revived (except under rare and extraordinary circumstances, like a USPTO clerical error.) In most cases, an applicant will need to re-apply for the mark and start over.

Another risk is that, when a trademark application is “abandoned,” it is listed as “dead.” If any other applications are pending based on the applicant’s application, then its possible that the pending applications can proceed before the expiration of the revival deadline. From an optics standpoint, an application listed as “dead” may not be a strong deterrent from others considering applying for a similar trademark.

Can an attorney help?

In many cases, merely responding to the Notice of Abandonment with a Petition to Revive will not be sufficient. An experienced trademark attorney can review the reason for the initial refusal and provide recommendations on how to proceed cost-effectively. Further, a trademark attorney would manage deadlines to help avoid the abandonment in the first place, giving deadline reminders to the applicant if any documents or responses are needed.

While there are ways to deal with a Notice of Abandonment, the easiest is to accurately track and respond to USPTO Office Actions before the deadlines.

To summarize, when receiving a Notice of Abandonment, timing is crucial. Applicants must respond within 60-days and must resolve the issues raised by the Examining Attorney. If they don’t, their applications will be permanently abandoned.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.