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12 J. Contemp. Legal Issues 124 (2001-2002)
How to Successfully Revive an Abandoned Trademark Application

handle is hein.journals/contli12 and id is 144 raw text is: How to Successfully Revive an Abandoned Trademark Application SETH ERBE Trademarks, October 2000 For purposes of this discussion, assume the PTO has surprised your client by declaring abandoned its application for federal registration of its mark, and that no grounds for reinstatement of the application are available.' This declaration of abandonment has come in response to a failure of the applicant or its representative to communicate with the PTO attorney assigned to examine the application in one of two main contexts: (1) The original application was not satisfactory and an office action was sent to the applicant. No response to this action was received by the PTO within six months of the action's mailing.2 (2) The original ITU application was satisfactory and a notice of allowance was mailed to the applicant. However, no statement of use or request for an extension to file was received by the PTO within six months of mailing of the notice of allowance.3 At this point, the lawyer should perform a detailed search of his or her records in an attempt to discover the reasons for failure to communicate. The reasons for the failure will provide the basis, if any, for the lawyer's petition to revive the abandoned application. What should I do now? PTO Regs § 2.66 specifies the grounds and procedure for reviving an abandoned application. 1. Grounds for reinstatement of an application declared abandoned pertain to mistake or inadvertence by the examining attorney or to mishandling of application or examination papers by the PTO. See Trademark Manual of Examining Procedure (TMEP) § 1112.04 (2d ed. 1993, rev. 1997). 2. Lanham Act § 12(b); The Patent and Trademark Office, Rules of Practice in Trademark Cases (PTO Regs), 37 C.F.R. § 2.65(a). 3. Lanham Act § I(d), esp. l(d)(4); PTO Regs, 37 C.F.R. § 2.65(c), 2.88.

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