718.08 Revival or Reinstatement of Abandoned Application - New Search Required
When an abandoned application is revived or reinstated, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the search shows that a later-filed conflicting application has been approved for publication, the examining attorney should request jurisdiction 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) and 1504.04(a).
If the new search shows that a later-filed conflicting application 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 has the option of filing a petition to cancel the registration under Section 14 of the Trademark Act, 15 U.S.C. 1064.See TMEP §§1714 et seq. regarding petitions to revive, TMEP §1712.01 regarding reinstatement of applications abandoned due to Office error, and TMEP §1713 regarding petitions to reverse a holding of abandonment.