United States: USPTO Issues New Guidelines For Reviving Abandoned Trademark Applications And Reinstating Expired/Cancelled Registrations

In July 2017, the U.S. Patent and Trademark Office amended the rules for filing petitions to revive abandoned trademark applications, petitions to reinstate expired/cancelled trademark registrations and petitions to the Director of the USPTO regarding other trademark matters.

The new rules, released in August 2017 as the "Examination Guide 4-17," clarify the requirements and harmonize the deadlines for filing petitions to revive abandoned trademark applications with other types of petitions to the Director. They also remove any uncertainty for applicants, registrants, third parties and the USPTO as to whether a petition to revive an abandoned trademark application or petition to reinstate an expired or cancelled trademark registration is timely.

Previously, the Trademark Manual of Examining Procedure (TMEP § 1714 (37 C.F.R. § 2.66)) provided that when a trademark application became abandoned — for example, because an applicant failed to timely respond to an Office Action issued by the USPTO — the applicant could file a petition to revive the application either (1) within two months of the date of issuance of the notice of abandonment, or (2) within two months of the applicant's actual knowledge of the abandonment, if the applicant did not receive the notice of abandonment but was "duly diligent" in tracking the status of his or her application. Similar timing rules previously applied to registrations that became cancelled or expired — for example, if the registrant timely filed renewal documents that were lost or mishandled by the USPTO.

However, the old rules led to situations where it was difficult for the USPTO to determine when the party had actual notice of the abandonment of an application or expiration/cancellation of a registration, and whether the party was duly diligent in prosecuting the application or maintaining the registration. This meant that a petition to revive an abandoned application filed more than two months after a notice of abandonment was issued, or more than two months after the USPTO's online records were updated, was likely to be dismissed as untimely, even if the applicant never received the notice of abandonment.

The new Examination Guide 4-17 clarifies the timing for filing a petition to revive an abandoned application and removes the uncertainty in the USPTO's assessment of whether an applicant was "duly diligent" in monitoring the status of his or her application. Specifically:

• The new rules make it clear that petitions to revive abandoned applications must be filed no later than six months after the USPTO's electronic records are updated to show that the application is abandoned.
• The same deadlines also apply to petitions to reinstate applications and registrations that have been abandoned, cancelled or expired due to USPTO error.

These new instructions were incorporated into the October 2017 revision to the TMEP.

By removing the uncertainty in the USPTO's assessment of whether an applicant or registrant was "duly diligent" in monitoring the status of an application or registration, the new rules should help ensure that the public has proper notice of the deadlines and requirements for making timely requests to the USPTO to revive an abandoned trademark application, or a petition to reinstate an expired or cancelled trademark registration.

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