TMEP 718.01: Express Abandonment by Applicant or Applicant’s Attorney

This is the October 2015 Edition of the TMEP

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718.01    Express Abandonment by Applicant or Applicant’s Attorney

37 C.F.R. 2.65(b)

An application will be abandoned if an applicant expressly abandons the application pursuant to § 2.68.

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

  • (a) Written document required. An applicant may expressly abandon an application by filing a written request for abandonment or withdrawal of the application, signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under §11.14 of this chapter, in accordance with the requirements of §2.193(e)(2). A request for abandonment or withdrawal may not subsequently be withdrawn.
  • (b) Rights in the mark not affected. Except as provided in §2.135, the fact that an application has been expressly abandoned shall not affect any rights that the applicant may have in the mark set forth in the abandoned application in any proceeding before the Office.

37 C.F.R. §2.135 Abandonment of application or mark.

After the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant. The written consent of an adverse party may be signed by the adverse party or by the adverse party’s attorney or other authorized representative.

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 USPTO 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)(5) and 2.148 to waive 37 C.F.R. §2.68(a) to permit withdrawal of the express abandonment, within two months of the effective date of abandonment. See 37 C.F.R. §2.146(d). However, such a petition will be granted only in an extraordinary situation, where justice requires, and no other party is injured. See 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.