T.M.E.P. § 718.01
Express Abandonment by Applicant or Applicant's Attorney

Executive summary:

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718.01 Express Abandonment by Applicant or Applicant's Attorney

37 C.F.R. 2.68. Express abandonment (withdrawal) of application.

An application may be expressly abandoned by filing in the Patent and Trademark Office a written statement of abandonment or withdrawal of the application signed by the applicant, or the attorney or other person representing the applicant. Except as provided in §2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, affect any rights that the applicant may have in the mark which is the subject of the abandoned application.

To expedite processing, the Office recommends that letters of express abandonment be filed through TEAS, at http://www.uspto.gov/teas/index.html.

A letter expressly abandoning an application must be signed by the applicant or the applicant's attorney. An application cannot be expressly abandoned by examiner's amendment.

When an applicant files a letter of express abandonment that meets the requirements of 37 C.F.R. 2.68, the examining attorney should perform a transaction expressly abandoning the application in TRAM, effective as of the filing date of the letter of express abandonment. TRAM 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 Group Limited, 33 USPQ2d 1535 (Comm'r Pats. 1993).

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 withdraw the abandonment because the abandonment, if not withdrawn, may result in entry of judgment against the applicant in the opposition. See TBMP §§218 and 602.01.

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