Earlier this year, the United States Patent and Trademark Office (USPTO) released a final rule, which recently just went into effect in early July 2017. The rule, which amends, Title 37, Part 2 of the United States Code of Federal Regulations is meant to provide specific and detailed directions on the deadlines and requirements for (1) requesting revival of abandoned trademark applications, (2) requesting reinstatement of abandoned, cancelled, or expired trademark registrations, and (3) requesting any other action from the Director of the USPTO. Through the its changes, the USPTO hopes to make the process of applying for and maintaining trademarks easier and more efficient for the public at large. This post will primarily focus on the first two points of change.
Reviving Abandoned Trademark Applications
Generally, if you apply for a trademark, odds are that you may get what is called an “office action” from the USPTO. An office action generally denies the trademark application and lists one or more reasons behind the decision. However, you can try to persuade the USPTO otherwise. You have six months to respond to an office action in one way or another. If you miss the deadline, the USPTO considers the application as abandoned, in full or in part, and will notify you as such. An application is usually considered partially abandoned only if the office action’s refusal was regarding a certain subset of goods, service, or classes relevant to your application.
However, according to 37 C.F.R. § 2.66, it is possible to file a petition to revive an application within two months after the USPTO issued a notice of abandonment or within two months after you find out about the application if you were diligent in checking and following up on the status of the application. This evidence of diligence must be shown in the petition for revival.
The new rule does not change much with this process, except to clarify that partial application abandonment also falls under the procedures and requirements of § 2.66.
Through the new rule, the USPTO added 37 C.F.R. § 2.64. This new portion of the USPTO regulations focuses on USPTO office error. Prior to the new rule, like how you would be able to petition for revival of a trademark application, you could also file for reinstatement of an abandoned, expired, or cancelled trademark registration if the trademark registration was abandoned due to an office error on behalf of the USPTO. However, before the new rule, there was no deadline for filing the reinstatement request and the USPTO did not really require any proof of checking up on the trademark registration regularly or diligently to make sure the registration was still valid. The fact that there was no deadline for filing especially hindered members of the public who were interested in registering a trademark that they thought was abandoned.
Now, however, with the addition of § 2.64, you would be able to file for reinstatement of a registration due to office error and you would now also be able to file for revival of a trademark application due to office error.
Additionally, the new rule imposes time limits similar to § 2.66. In both situations, whether you are intending to file a petition for revival or request for reinstatement, you must make such filings within two months after receiving a notice of abandonment, expiration, or cancellation from the USPTO, or within two months of having actual knowledge regarding the abandonment, cancellation, or expiration. Again, like § 2.66, the USPTO adds a due diligence requirement to this new § 2.64.
Awareness and Knowledge are Key – Contact an Attorney
Trademarks are an important part of branding and marketing. However, trademark law is sometimes a complicated area filled with twists and turns. Properly communicating and interacting with the USPTO during the application, registration, and maintenance process of your or your company’s trademark is also key. Failing to follow certain procedures can lead to unintended consequences or even wasted time and money. Due to this, you will want to make sure to work with a licensed trademark law attorney during the trademark application process.