Petition To Revive Trademark: Everything You Need To Know
A petition to revive trademark is a form filed with the USPTO to regain the right to a trademark for which you have allowed registration to lapse.3 min read
A petition to revive trademark is a form filed with the United States Patent and Trademark Office (USPTO) to regain the right to a trademark for which you have allowed registration to lapse or to begin using a mark another entity has abandoned. Trademark protection through the USPTO prevents others from using your protected design, phrase, word, or symbol. Simply using a unique trademark in the marketplace gives you rights over the mark. However, if you stop using the mark, it can potentially be taken over by another individual or business.
Reasons for Losing a Trademark
Trademark rights can be lost when:
- The mark becomes generic.
- The mark is improperly assigned or licensed to a third party.
- The mark is abandoned, which means it has not been used for at least three years in a row. This is called prima facie abandonment.
Knowing why you have lost the rights to your trademark is the first step in getting them back. While abandoned marks can often be revived, generic or improperly assigned marks can no longer be effectively used to stand for your product in the market.
Steps To Revive a Trademark
- Check the status of the trademark by searching the USPTO database, called the Trademark Electronic Search System. If someone else has begun using the mark and/or registered the mark with the USPTO, you will not be able to revive it. However, you may be able to license the rights from the trademark's new owner for a fee.
- If the trademark is simply marked as abandoned, you can re-establish your rights to the mark by using it in commerce. You do not need to federally register the mark to have legal rights over it as long as it is in continuous use to represent your business in the market.
- You can secure your rights to the trademark by registering the mark with the USPTO. Although this is not required, it will create a stronger legal case if your ownership of the mark is ever challenged.
- If your situation is complex, you may want to consult with an experienced intellectual property attorney about your trademark rights.
Filing a Petition To Revive a Trademark
If you abandon a trademark registration application, you can reinstate it by filing a Petition to Revive. This step is required if you have failed to respond to an office action during the application process or do not file a statement of use or a required extension.
If you receive a notice of abandonment or have abandoned your trademark application, you have two months from that date to file a petition to revive the mark. This is done if you unintentionally fail to respond to the original deadline, which you must swear to in court. You must also pay a petition fee and complete the action that was originally required. When you make this request, you may be eligible to move the application from abandoned to either pending or active.
After six months have passed since the petition is marked as abandoned, you may no longer file the petition to revive. This is also true when the mark is expired or canceled because of error on the part of the USPTO.
If the action that was not answered was a final office action, you must also file a notice of appeal with the Trademark Trial and Appeal Board. This is treated as a request for consideration and is possible only if:
- You file the request either within two months of the petition's denial date or between two and six months of the date if you declare that you did not receive the original decision.
- You pay another petition fee.
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