Short answer, not always. A Notice of Abandonment is issued when a Trademark Applicant fails to take action by not filing a timely response to an Office Action or a Notice of Allowance. The Notice of Abandonment triggers a two-month period wherein the Applicant can file a Petition to Revive Abandoned Application. However, if the applicant failed to file a Statement of Use in response to the Notice of Allowance after expiration of the fifth extension (or 36 months from the date of the Notice of Allowance), the Applicant cannot revive the application and must re-file. The Trademark Electronic System (TEAS) will alert the Applicant upon entry of the U.S. Serial Number at the time of filing the petition.
There are two types of Petitions to Revive:
- A Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action. This Petition must have an accompanying Office Action Response addressing all issues raised in the Office Action.
- A Petition to Revive Abandoned Application – Failure to File Timely Statement of Use Or Extension Request. This Petition is necessary when an Applicant has failed to respond to a Notice of Allowance received in connection with an Intent To Use application. The Applicant will have the option of filing a Statement of Use or, if the Applicant has any of the 5 allotted extension remaining and the Petition not is being filed beyond 30 months from issuance of the Notice of Allowance, an Extension Request.
If you have received a Notice of Abandonment, we recommend you seek counsel from a Trademark Attorney immediately as the passage of time can reduce your chances of getting the Petition to revive granted. Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.