718    Abandonment

An abandoned application is an application for registration that is removed from the USPTO docket of pending applications because of express abandonment or because the applicant failed to take appropriate action within the specified response period.

718.01   Express Abandonment by Applicant or Applicant’s Attorney

To expedite processing, the USPTO recommends that letters of express abandonment be filed through TEAS, at http://www.uspto.gov.  Generally, all express abandonments filed via TEAS are processed electronically and the Trademark database is automatically updated to indicate that the application has been expressly abandoned and generates a notice to the applicant that the application is abandoned.  However, in the later stages after the application has been approved for publication, the TEAS system will not automatically process an incoming express abandonment, and the express abandonment must be reviewed manually.  The Office is generally unable to withdraw a mark from publication or issue unless the express abandonment is received and processed at least twenty days before the scheduled publication date or registration issuance date. 

Paper letters of express abandonment are reviewed by examining attorneys.

All letters of express abandonment must be signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership), or a qualified practitioner.  37 C.F.R. §2.68(a); see TMEP §§608.01, 611.02.  The same principles that govern the signature of responses to Office actions (see TMEP §§712, 712.01) apply to the signature of express abandonments.  For express abandonments filed on paper, the examining attorney must ensure that the letter of express abandonment is signed by a proper party.  If the applicant is represented by a qualified practitioner, the practitioner must personally sign the letter of express abandonment.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a).  If the applicant is pro se, the letter of express abandonment must be personally signed by the individual applicant or someone with legal authority to bind a juristic applicant.  37 C.F.R. §§2.193(e)(2)(ii), 11.14(e).  See TMEP §611.06 for more information about persons who have legal authority to bind various types of juristic applicants, and TMEP §§611.05–611.05(b) and 712.03 regarding documents signed by unauthorized parties.

An application cannot be expressly abandoned by examiner’s amendment.

When an applicant files a letter of express abandonment on paper that meets the requirements of 37 C.F.R. §2.68(a), the examining attorney should perform a database transaction expressly abandoning the application, effective as of the filing date of the letter of express abandonment, which will generate a letter notifying the applicant that the application is abandoned.

If it is unclear whether a document is a letter of abandonment, the examining attorney should contact the applicant to inquire about his or her intention before abandoning the application.  

If an applicant files an express abandonment of an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, and wants to withdraw the abandonment to resume prosecution of the application, the applicant must petition the Director under 37 C.F.R. §2.146(a)(3) to request withdrawal of the express abandonment, within two months of the effective date of abandonment.  37 C.F.R. §2.146(d).  However, such a petition will be granted only in an extraordinary situation.  In re Glaxo Grp. Ltd., 33 USPQ2d 1535 (Comm’r Pats. 1993); cf. Christiane E, LLC v. Int’l Expeditions, Inc., 106 USPQ2d 2042 (TTAB 2013).

If the applicant files a written request to abandon the application after the commencement of an opposition proceeding, the request for abandonment must be filed with the Board, and must include the written consent of every adverse party to the proceeding.  If the applicant files a request for abandonment without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant.  37 C.F.R. §2.135.  If an applicant whose application is the subject of an opposition proceeding files an express abandonment of the application after the commencement of the opposition proceeding, but before receipt of the Board’s notice of the filing of the opposition, the Board will allow the applicant an opportunity to obtain and submit the written consent of every adverse party or to withdraw the abandonment because an unconsented abandonment, if not withdrawn, may result in entry of judgment against the applicant in the opposition.  TBMP §602.01.  It is not necessary to obtain consent of a potential opposer during an extension of time to oppose.  TBMP §218.

In a §66(a) application, an applicant may file a letter of express abandonment either with the USPTO or with the IB.

718.02   Failure by Applicant to Take Required Action During Statutory Period

Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a), an application becomes abandoned if the applicant fails to respond, or fails to respond completely, within the six-month statutory response period.  See TMEP §§718.03–718.03(c) regarding incomplete responses.  When an applicant is granted additional time to perfect its response under 37 C.F.R. §2.65(b) (TMEP §718.03(b)), but fails to respond or responds late, the date of abandonment is not affected.  It remains the day after the date on which the six-month response period ends, since the grant of additional time to perfect a response does not extend the statutory six-month response period.

The examining attorney has no authority to accept a late response.  If an applicant files a late response, the examining attorney must immediately send a notice to the applicant stating that the response was untimely; that the application is abandoned; and that the applicant may file a petition to revive under 37 C.F.R. §2.66 if the failure to timely respond was unintentional.  See TMEP §§1714–1714.01(g) regarding petitions to revive.

See TMEP §718.02(a) regarding partial abandonment.

718.02(a)   Partial Abandonment

General Rule.  Trademark Rule 2.65(a), 37 C.F.R. §2.65(a), provides that if a refusal or requirement is expressly limited to certain goods/services, and the applicant fails to file a response, or fails to respond completely, to the refusal or requirement, the application will be abandoned only as to those particular goods/services.

Exception - Requirements for Fees to Cover All Classes in a Multiple-Class Application. If the fees paid in a multiple-class application are sufficient to cover one class but insufficient to cover all the classes, the examining attorney will require that the applicant submit the additional fees or specify the classes to which the original fee(s) should be applied. Under such circumstances, it is not appropriate to give a partial-abandonment advisory. If the applicant does not respond to the Office action, the entire application will be abandoned.

Office Action Must State That Refusal Applies Only to Certain Goods, Services or Classes.  If the examining attorney issues a refusal or requirement that applies only to certain goods/services/class(es) in any Office action (i.e., a first or subsequent nonfinal Office action, final action, or denial of a request for reconsideration), this must be expressly stated in the Office action.  Partial abandonment applies only if the Office action expressly states that a refusal or requirement is limited to only certain goods/services/class(es).  Unless the action includes a clear and explicit statement that the refusal or requirement applies to only certain goods/services/class(es), the refusal or requirement will apply to all the goods/services/class(es), and failure to respond to the action will result in abandonment of the entire application.

Incomplete Response to Partial Refusal or Requirement.  Partial abandonment may also occur when an applicant fails to file a complete response to a final refusal or final requirement that is expressly limited to only certain goods/services/class(es).  If an applicant files an incomplete response to a nonfinal action that is limited to only certain goods/services/class(es), the examining attorney should generally issue an action making all outstanding requirements and refusals final rather than partially abandoning the application.  See TMEP §§718.03–718.03(b) regarding incomplete responses.  When an examining attorney holds an application abandoned for failure to file a complete response, the applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the holding.  See TMEP §1713.01.

Failure to Respond to Partial Refusal or Requirement.  When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods/services/class(es), the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained.  The examiner’s amendment should clearly set forth the changes that will be made to the identification of goods/services in the application.  No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation.  TMEP §707.02.  If the failure to respond to the partial refusal or requirement was unintentional, the applicant may file a petition to revive the deleted goods/services/classes under 37 C.F.R. §2.66, within two months of the issuance date of the examiner’s amendment.  See TMEP §§1714 et seq. regarding petitions to revive.

Failure to Perfect Appeal of Partial Refusal or Requirement.  Partial abandonment can also occur when a partial refusal or requirement is upheld on appeal, and the applicant fails to perfect an appeal to, or an appeal is dismissed by, the Court of Appeals for the Federal Circuit or civil court, or when an applicant withdraws or fails to prosecute an appeal of a partial refusal to the Board.  In these situations, the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/class(es) to which the appeal pertained.  No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation.

Use of Headings in Office Actions Encouraged.  When issuing a partial refusal or requirement, the examining attorney is encouraged to use the heading "Partial Refusal" or "Partial Requirement," so the record is clear that the refusal or requirement applies only to certain goods/services/class(es).

Use of Abandonment Advisory in Office Actions.  When issuing a partial refusal or requirement, the examining attorney should advise the applicant that if the applicant does not respond to the Office action within the response period, certain goods/services/class(es) will be deleted from the application (abandoned) and the application will proceed forward with only the remaining goods/services/class(es).

Requirements for Amendment of Identification of Goods/Services.  See TMEP §1402.13 regarding an examining attorney’s requirement for amendment of an identification of goods/services that includes some terminology that is indefinite and some terminology that is acceptable, and the processing of applications in which an applicant fails to respond to such a requirement.

718.03   Incomplete Response

Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a), an applicant must respond completely to each issue raised in the examining attorney’s Office action to avoid abandonment.  A response is incomplete if it:  (1) does not address one or more of the requirements or refusals made in the Office action; (2) is unsigned; (3) is signed by an unauthorized person; or (4) is a response to a final action that does not overcome all refusals or satisfy all requirements, when the response period has expired, and the applicant has not timely filed a notice of appeal.  See TMEP §715.03(a).

Exception - TEAS Responses Consisting Only of a Signature or Missing Significant Data or Attachments. Occasionally, the USPTO receives a response to an Office action filed through TEAS that consists only of a signature or is missing significant data or attachments. This is generally due to user error. If an examining attorney receives a TEAS response to a nonfinal action that consists only of a signature or is missing significant data or attachments, the examining attorney should not issue a notice of incomplete response granting the applicant additional time to complete the response. Instead, the examining attorney must issue a final action, and include sufficient evidence and arguments for all refusals and requirements in preparation for a possible appeal, if the application is in condition for final action. If the application is not in condition for final action (e.g., because a prior pending application has matured into a registration), the examining attorney should issue another nonfinal action, with a six-month response clause, explaining why the response was incomplete, continuing all outstanding refusals and requirements, and addressing any new issues.

Unsigned Responses. If a response is unsigned, the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal.  The examining attorney should issue a notice of incomplete response, granting the applicant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b).  See TMEP §718.03(b).  The applicant must submit a properly signed copy of the response, or, if all issues raised are proper subject matter for an examiner’s amendment, the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s previously recognized qualified practitioner may authorize the examining attorney to enter an examiner’s amendment.  A new qualified practitioner who has not yet appeared may not authorize an examiner’s amendment, because a telephone call from a qualified practitioner does not satisfy the "appearance" requirements of 37 C.F.R. §2.17(b). See TMEP §604.01. If all issues raised are not proper subject matter for an examiner’s amendment, the applicant may not ratify the unsigned response through an examiner’s amendment.  See TMEP §712.02.  If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §718.03(a).

Responses Signed by Unauthorized Persons.  If a response is signed by an unauthorized party (e.g., a foreign attorney who is not a member in good standing of the bar of the highest court of a state in the United States or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal.  The examining attorney should issue a notice of incomplete response, granting the applicant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b).  The applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant (see TMEP §§611.06, 712.01), or by a qualified practitioner (see TMEP §§602–602.03(e) .  37 C.F.R. §2.62(b).  If a response was signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.  See TMEP §§611.05–611.05(b) and 712.03 for further information.  If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §718.03(a) regarding holdings of abandonment for failure to respond completely.

Properly Signed but Incomplete Responses to Nonfinal Actions.  When an applicant files an incomplete response to a nonfinal action (i.e., does not address one or more of the requirements or refusals made in the Office action), the examining attorney should not hold the application abandoned.  Instead, the examining attorney should generally issue a final action, if the application is in condition for final action. In limited circumstances, the examining attorney has discretion to issue a notice of incomplete response granting the applicant additional time to complete the response if the response meets the requirements of 37 C.F.R. §2.65(b) (see TMEP §718.03(b)).  If the application is not in condition for final action, and the response does not meet the requirements of 37 C.F.R. §2.65(b), the examining attorney should issue another nonfinal action, explaining why the response was incomplete, and continuing all outstanding refusals and requirements.

A written disagreement with the examining attorney’s refusal or requirement may be a complete response to a nonfinal action with respect to that refusal or requirement.

Properly Signed but Incomplete Responses to Final Actions.  See TMEP §715.03(a)(2)(E) regarding properly signed but incomplete responses to final actions and TEAS responses to final actions that are unsigned, signed by unauthorized persons, consisting only of a signature, or missing significant data or attachments.

Non-Responsive Communications.  An inquiry, a request to extend the response period, or a communication on a matter unrelated to the preceding Office action should be treated as a non-responsive communication, not as an incomplete response.  See TMEP §719 for further information.

Failure to Respond to Notice of Incomplete Response.  If the examining attorney issues a notice of incomplete response, and the applicant fails to respond or submits an unsatisfactory response to the notice, the examining attorney will abandon the application for incomplete response.  See TMEP §718.03(b).

See TMEP §717.02 regarding the procedure for handling an applicant’s claim that the applicant did not receive the Office action.

718.03(a)   Holding of Abandonment for Failure to Respond Completely

Generally, the examining attorney should not hold an application abandoned when an applicant timely files a properly signed but incomplete response to a nonfinal action (i.e., the response does not address one or more of the requirements or refusals made in the Office action) or a TEAS response to a nonfinal action consisting of only a signature or missing significant data or attachments.  See TMEP §718.03.  

The examining attorney may hold an application abandoned after final action if (1) the applicant files a properly signed but incomplete response which does not include a good-faith effort to comply and the time for responding to the final action has expired or (2) the applicant fails to respond to a notice of incomplete response.  In such cases, the examining attorney should issue an "Abandoned Due to Incomplete Response" action, without a six-month response clause (see TMEP §705.08), stating that the application is abandoned due to an incomplete response, and explaining why.  

The applicant may contact the managing attorney or senior attorney and request review of the examining attorney’s action. If the managing attorney or senior attorney believes that the holding of abandonment was improper, he or she will direct the examining attorney to reverse the holding of abandonment. Otherwise, the applicant’s recourse is to file a petition requesting that the Director exercise supervisory authority under 37 C.F.R. §2.146 and reverse the holding of abandonment. See TMEP §1713.01.

See TMEP §715.03(a) regarding action on an incomplete response to a final action before the response period has expired.

718.03(b)   Granting Additional Time to Perfect Response

Under 37 C.F.R. §2.65(b), the examining attorney has discretion to give an applicant additional time to perfect the response if:

• (1) the response was filed within the six-month period;
• (2) the response was a bona fide attempt to advance the examination;
• (3) the response was a substantially complete response to the examining attorney’s action; and
• (4) consideration of some matter or compliance with some requirement was inadvertently omitted.

Generally, this discretion should be exercised in connection with a response to a final action. If an applicant makes a good faith, but incomplete, effort to comply in response to a nonfinal action, the examining attorney generally should issue a final action. See TMEP §§715.03-715.03(c) regarding processing requests for reconsideration after final action.

If the examining attorney decides that the response meets all four criteria, he or she should issue a notice of incomplete response explaining why the response is incomplete and granting the applicant 30 days, or to the end of the response period set forth in the action, whichever is longer, to perfect the response.  The examining attorney must not include a six-month response clause in the action.

If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. §2.65(b), the time for filing an appeal to the Trademark Trial and Appeal Board (or a petition to the Director under 37 C.F.R. §2.63(b)) is not extended.  The applicant must file a notice of appeal (or petition) within six months of the issuance date of the final action.  15 U.S.C. §1062(b); 37 C.F.R. §§2.64(b), 2.142(a).

If the applicant fails to complete the response within the time granted pursuant to 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §718.03(a).  In this situation, the applicant cannot file a petition to revive due to unintentional delay, pursuant to 37 C.F.R. §2.66.  The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment.  See TMEP §1713.02. The Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion.  See TMEP §1713.01.

If the application is abandoned for failure to file a complete response, but the applicant did not receive the action granting additional time to complete a response, or was unable to respond to the action due to some other extraordinary circumstance, the applicant may file a petition requesting that the Director exercise supervisory authority under 37 C.F.R. §2.146 and reverse the holding of abandonment.   See TMEP §1713.02.

718.04   Failure to File Statement of Use

Under 15 U.S.C. §1051(d)(4), an application under §1(b) of the Act is abandoned if the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use.  37 C.F.R. §§2.65(c), 2.88(h); TMEP §§1108.01, 1109.04.

The ITU/Divisional Unit will abandon the application if the applicant fails to file a statement of use or request for an extension of time to file a statement of use within six months of the issuance date of the notice of allowance, or within a previously granted extension period.  The USPTO will send a computer-generated notice of abandonment to the applicant.

If the failure to timely file the statement of use or extension request was unintentional, the applicant may file a petition to revive under 15 U.S.C. §1051(d)(4) and 37 C.F.R. §2.66.  See TMEP §§1714–1714.01(g).

718.05   Failure to Perfect Appeal

An application may become abandoned because of withdrawal of, or failure to prosecute, an appeal to the Trademark Trial and Appeal Board. See 15 U.S.C. §1062(b); TBMP §1203.02(a); TMEP §1501.

An application may also become abandoned because of failure to perfect an appeal, or dismissal of an appeal, to the Court of Appeals for the Federal Circuit or civil court.  

See TMEP §718.02(a) regarding partial abandonment due to failure to perfect an appeal.

718.06   Notice of Abandonment for Failure to Respond

If no response is received by the USPTO within six months of the issuance date of an Office action, the application is sent to the examining attorney to be abandoned or partially abandoned, as appropriate.  The examining attorney must check the record to ensure that there is no response and that the Office action was sent to the correspondence address of record.  See TMEP §717 regarding reissuing an Office action that was sent to the wrong address due to a USPTO error.  The examining attorney must also check to see whether the Office action contained a partial refusal or requirement.  See TMEP §718.02(a) regarding partial abandonment.

An application is considered to be abandoned as of the day after the date on which a response was due, even though the examining attorney performs the Trademark database transaction that reports the abandonment at a later date.  The USPTO sends a computer-generated notice of abandonment to the correspondence address listed in the application.

Applications that are abandoned after ex parte appeals or inter partes proceedings are considered abandoned as of the date of the action by the Board that caused the application to abandon (e.g., affirming the examining attorney’s refusal or sustaining an opposition).  However, the Trademark database transaction reporting the abandonment is not performed until a month after expiration of the period for appeal from the Board’s decision.

718.07   Revival or Reinstatement of Abandoned Application - New Search Required

When an abandoned application is revived or reinstated, the examining attorney must conduct a new search of USPTO records for conflicting marks.  If the search shows that the same examining attorney handled a later-filed conflicting application that has been approved for publication, the examining attorney should request jurisdiction (TMEP §1504.04(a)) and suspend the later-filed application pending disposition of the earlier-filed (revived) application.  37 C.F.R. §2.83(c); TMEP §1208.02(c).

If the new search shows that the same examining attorney handled a later-filed conflicting application that has been approved for registration, the examining attorney should withdraw the application from issue (if possible) and suspend it.  However, if a later-filed conflicting application is already registered, the USPTO is without authority to cancel the registration.  The examining attorney must refuse registration of the earlier-filed (revived) application under 15 U.S.C. §1052(d).  In this situation, an applicant may file a petition to cancel the registration under Section 14 of the Trademark Act, 15 U.S.C. §1064.

If the later-filed conflicting application is being handled by a different examining attorney, the examining attorney handling the earlier-filed (revived) application should e-mail the other examining attorney to notify him or her of the revival or reinstatement.  The examining attorney handling the later-filed application will follow the procedures set forth above.

See TMEP §§1714–1714.01(g) regarding petitions to revive, TMEP §1712.01 regarding reinstatement of applications abandoned due to USPTO error, and TMEP §1713.01 regarding petitions to reverse an examining attorney’s holding of abandonment.