Though not required, registration with the USPTO provides you with exclusive rights for the trademark usage and the ability to take to court anyone infringing on your rights. You must actively protect your trademark by spotting and dissuading any infringement attempts. After registration, the law requires you to actively use the trademark by affixing it to your business's goods, displays, labels, containers, and documents.
After the registration, the trademark must be maintained by filing a declaration of continued use. A trademark registration becomes dead when the application wasn't completed or maintained. Once you stop using the trademark, your trademark rights become abandoned, creating an opportunity for someone else to acquire the rights.
A trademark registration may list several goods or services, some of which may still be in use. In such circumstances, it may be prudent to apply a more surgical approach by seeking to remove only non-used goods or services from the registration. A partial cancellation action filed under Section 18 of the Trademark Act [ 15 USC ] must plead that the proposed restriction or modification to the registration will avoid likelihood of confusion [ 15 TBMP Unlike a cancellation action due to abandonment brought under Section 14, a petitioner seeking partial cancellation can show merely nonuse without having to prove an intent not to resume.
That is to be distinguished from abandonment of a trademark application which results from the failure of an applicant to respond timely to certain deadlines. For example, failure to respond to an Office Action or to file a Statement of Use can result in abandonment of an application.
Abandoning a trademark application, however, does not necessarily mean that an owner has abandoned trademark rights. It is possible for an owner to continue using a trademark even if its application was abandoned. Foreign companies may register trademarks in the US without having to show use in commerce. If you try to file for the registration or start using the trademark yourself, you could still be violation of their trademark rights and could be sued for trademark infringement.
If you go to refile a trademark that was already refused, you may end up just receiving the same refusal, while also infringing on the other registered trademark that is causing the refusals.
Ultimately, if a trademark is truly abandoned or dead, you can refile for the trademark and obtain registration, but you will need to go in and start from scratch. The petition to revive must be received in the USPTO within two 2 months from the issue date on the notice of abandonment in full or in part. A Petition that is not timely filed will be denied. If a response was not filed because the applicant did not receive the office action, the applicant must still file a petition two 2 months after the date of actual knowledge of the abandonment and not later than six 6 months after the date the trademark electronic systems indicates that the application is abandoned in full or in part, in order to revive the application.
The applicant need not include a response to the office action. If the application was abandoned because of an error by the USPTO , we will reinstate the application at no cost. A request for reinstatement must be received within two 2 months from the issue date of the notice of abandonment or two 2 months after the date of actual knowledge of the abandonment and not later than six 6 months after the date the trademark electronic system indicates that the application is abandoned.
A request for reinstatement that is not timely filed will be denied. If a timely response was received in the USPTO, yet the application was declared abandoned, the applicant may request reinstatement of the application, provided they can submit proof of receipt in the USPTO. Read about the acceptable forms of proof in the TMEP. Abandoned means that the application is no longer pending and, thus, cannot mature into registration.
If we do not receive a proper SOU or extension request within this period, the application will be declared abandoned.
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