New Trademark Procedures at USPTO
The U.S. Patent and Trademark Office (“USPTO”) has changed the way that applicants and brand owners may revive abandoned, expired, or cancelled trademark applications and registrations. These new trademark procedures provide more precise timing for petitions to revive.
New TMEP Revisions
Before the recent revisions to the U.S. Trademark Manual of Examining Procedure (“TMEP”), trademark applicants and owners had to follow rather nebulous guidelines if they sought to revive an abandoned, expired, or cancelled trademark application or registration. Previously, if an application or registration was considered abandoned, expired, or cancelled, the TMEP required brand owners to file a petition to revive with the USPTO. Specifically, petitioners were required to file a petition: 1) within two months of the date of issuances 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 deemed “duly diligent” regardless.
On its face the rules seemed straightforward, but application of the rules was difficult and became inconsistent due to confusion over what constituted “duly diligent.” Due to differences in post and electronic record updating, the USPTO often had difficulty proving or disproving the “duly diligent” standard.
New Trademark Procedures for Reviving Trademark Applications and Registrations
As a result, the USPTO revised the procedure to revive in “Examination Guide 4-17,” published last August, which delineates how examiners and petitioners should proceed regarding petitions to revive abandoned, expired, or cancelled trademark applications and registrations. In particular, the new Examination Guide provides more precise timing regarding the filing of petitions to revive abandoned application and removes the “duly diligent” standard. A month later, in October, the USPTO formally amended Examination Guide 4-17 into the TMEP.
Now, the rules state that petitions to revive abandoned applications must be filed no later than six months after the USPTO’s electronic records are updated to reflect abandonment. Likewise, the petitioner has six months to file petitions to reinstate applications or registrations that have been abandoned, cancelled, or expired due to USPTO error.
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