TMEP 718.07: Revival or Reinstatement of Abandoned Application - New Search Required

October 2017 Edition of the TMEP

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718.07    Revival or Reinstatement of Abandoned Application - New Search Required

When an application listed as abandoned in the USPTO's Trademark database is revived or reinstated, the examining attorney must conduct a new search of USPTO records for conflicting marks.  If the new search shows that a later-filed application for a conflicting mark has been approved, or if a §2(d) search for a later-filed application for a conflicting mark was performed when the earlier-filed application was in abandoned status, the examining attorney with the earlier-filed application must inform the examining attorney with the later-filed application that the earlier-filed application has been revived or reinstated so that appropriate action may be taken. If the later-filed application has been published, the examining attorney handling that application should request jurisdiction (see TMEP §1504.04(a)) before suspending the application pending disposition of the earlier-filed application. 37 C.F.R. §2.83(c); TMEP §1208.02(c).

However, if a later-filed conflicting application is registered, the examining attorney must refuse registration of the earlier-filed (revived or reinstated) application under 15 U.S.C. §1052(d).  In this situation, an applicant may file a petition to cancel the registration under Section 14 of the Trademark Act, 15 U.S.C. §1064.