Having your federal trademark application approved is reason to celebrate. This is because registration affords you protection at the national level. Also, generally speaking, registered status can last indefinitely.
But, keep in mind that you need to take certain steps to maintain your registration or you could risk the mark falling into “dead” or “abandoned” status. That said, there are instances where you can successfully revive a dead trademark.
Reasons Why Trademarks Die
Before we delve into the process of reviving a trademark, it’s important to understand the reason behind why your mark’s status may have changed. Below is a list if the most common reasons:
- Your application was never finished, meaning you never completed the registration process
- You abandoned the registered mark by not continuing to use it in the marketplace
- You failed to renew the mark – which requires filing after year 5 and year 9
- A third-party petitioned to cancel your registration on the basis that you are infringing on their trademark
- The mark became too generic – for example “Kleenex” lost their trademark protection because the name has come to refer to any facial tissue
- You expressly abandoned the trademark
Improper licensing is also grounds for losing registered trademark status. Specifically, you can lose protection if you license your trademark to a third party who does not use it for the exact same goods or services.
Note that after any of the above scenarios occur, you will receive a notice of abandonment from the USTPO.
Petition to Revive
If you would like to revive a trademark that is dead due to an abandoned application, failing to respond to an office action, or failure to file a Statement of Use, you can initiate the process by submitting what is known as a Petition to Revive.
Bear in mind that the petition must be filed within 60 days after your Notice of Abandonment is received. In the document, you will need to certify under oath that the lapse was unintentional. It’s important to note that once the 60-day period has passed you will no longer be able to file a Petition to Revive.
Instead, you will need to file a new trademark application. But, during this time you are still able to use your name or logo in the marketplace and will have protection at the state level. However, you will not have federal protection unless you refile.
Also, beware that if someone else registers the mark after yours was declared abandoned, you may lose your right to use the mark.
More Complicated Issues
Now, sometimes a trademark is lost for issues related to the mark itself. Examples would be if the trademark has become too generic or has been found to be infringing on another’s mark. In these situations, the process becomes more complicated.
In most cases, you will be required to go to court and provide evidence that supports your right to continue to have federal protection. Because these cases can be very complex, it’s best to consult with an attorney.
Changes in Light of COVID-19
Keep in mind that in light of recent events, the USTPO has changed some of its policies in response to COVID-19. Specifically, the virus and surrounding circumstances have been deemed an “extraordinary situation”. This means that as of March 23, 2020, abandoned applications may be revived if they were canceled or expired due to the applicant’s inability to respond because of the effects of the virus.
In addition, revival fees may also be waived. But, it’s important to note that the deadlines are not automatically waived or extended. For that reason, you should still make all attempts to respond to any office acts and file your renewal forms as scheduled.