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

This is the October 2015 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 search shows that the same examining attorney handled a later-filed conflicting application that has been approved for publication, the examining attorney should request jurisdiction (TMEP §1504.04(a)) and suspend the later-filed application pending disposition of the earlier-filed (revived) application. 37 C.F.R. §2.83(c); TMEP §1208.02(c).

If the new search shows that the same examining attorney handled a later-filed conflicting application that has been approved for registration, the examining attorney should withdraw the application from issue (if possible) and suspend it. However, if a later-filed conflicting application is already registered, the USPTO is without authority to cancel the registration. The examining attorney must refuse registration of the earlier-filed (revived) 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.

If the later-filed conflicting application is being handled by a different examining attorney, the examining attorney handling the earlier-filed (revived) application should e-mail the other examining attorney to notify him or her of the revival or reinstatement. The examining attorney handling the later-filed application will follow the procedures set forth above.

See TMEP §§1714–1714.01(g) regarding petitions to revive, TMEP §1712.01 regarding reinstatement of applications abandoned due to USPTO error, and TMEP §1713.01 regarding petitions to reverse an examining attorney’s holding of abandonment.