What is happening this week? Something must be in the air. I feel like I've been putting out fire after fire.
As you might have guessed from the title, I had to deal with an application that was abandoned. Here is how it went down.
Client calls, panicked and angry, "Why is my trademark application abandoned?" My secretary runs into my office. "Client X called a couple of times today and Attorney Y is not in the office. Can you take the call?" I look up, take off my glasses, and say, "Sure. I'll be the hero."
It turns out, Attorney Z filed a trademark application for Client X last year. Subsequently, a Notice of Allowance was issued, but because this application was filed on a 1(b) (intent to use) basis, Statement of Use or Request for Extension needed to be filed to show the USPTO that the trademark was being used in commerce to identify goods and/or services. Attorney Z never filed a Statement of Use or Request for Extension, and he left the firm.
Fast forward about eight months, and USPTO issued a Notice of Abandonment. Well, apparently, no one received the Notice of Abandonment. And for some reason, no one was tracking this trademark application. So more than two months go by, and here I am today, talking to angry Client X.
What did I do? I offered to file a petition to revive Client X's application free of charge.
When a trademark application goes abandoned, for one reason or another (usually for failing to file a Statement of Use or Request for Extension), Applicants receive a Notice of Abandonment. You can file a petition to revive within two months of the date of the Notice of Abandonment. If more than two months passed, then you can file a Due Diligence Petition under Trademark Rule 2.66 within two months of discovering that your trademark has become abandoned.
Due Diligence Petition, however, can be tricky because you have to meet a couple of requirements. The requirements are laid out in 37 C.F.R. 2.146. Basically, you have to explain:
1. When and how you found out your application was abandoned;
2. Show that you have been duly diligent in prosecuting the application, meaning that you checked the status of your application every six months since you filed it; and
3. Promptly request a corrective action in writing.
This is a first petition for me so I don't know if this will be successful. But if this doesn't work, then I guess I can ask for a reconsideration. If that doesn't work, then I will probably file another trademark application for the same mark. At least with trademarks, I have that option. If this was a patent application, I'd be screwed.