How long it takes USPTO to declare a trademark application abandoned?

Sometimes a trademark practitioner will have a pending US trademark application (“the Junior Application”) that has been suspended pending the disposition of an earlier application (“the Senior Application”). And sometimes the Senior Application will “have one foot in the grave” in the sense that it has received a Notice of Allowance and has not, apparently, timely filed a Statement of Use. In such a case, the natural question is, how long does it take the USPTO to get around to formally declaring the Senior Application abandoned? I looked at a couple of recent cases to see.

In one recent case that we were following, the Statement of Use (“SOU”) would have been due by March 25, 2019 and the USPTO formally declared the case abandoned on April 29, 2019, which is 35 days later. In another recent case that we were following, the SOU would have been due by February 16, 2019 and the USPTO formally declared the case abandoned on March 25, 2019, which is 37 days later.

So it looks like these days the USPTO tends to take around seven weeks to decide that the applicant really did not file its SOU.

Why does it take so long for the USPTO to do this?  Part of the answer, of course, is that although some 99% of SOUs are e-filed, the trademark rules still permit an applicant to file an SOU by postal mail or by fax or by hand-carrying the SOU to the USPTO.  (You can see the rule for certificates of mailing at 37 CFR §2.197.)  So the USPTO has little choice but to allow some time to pass, before declaring an application abandoned, to allow for the possibility that it might take some time for a USPTO employee to push a four-wheeled cart containing a non-e-filed SOU from one part of the USPTO to another.

When a Junior Application stands suspended like this, what happens next after the USPTO declares a Senior Application to be abandoned?  The usual answer is that nothing at all happens, not for some months, until the next time that the Junior Application comes up for a suspension check within the USPTO.  This might be anywhere from one day to six months later.  

The trademark practitioner responsible for such a Junior Application could simply take a nap and wait for the next time that a suspension check comes around at the USPTO.  The drawback to this approach is that by the time the suspension check happens, the following events might have occurred:

  • the USPTO mails out a Notice of Abandonment to the applicant in the Senior Application;  and
  • the applicant in the Senior Application files a petition to revive;  and
  • as a consequence, the Senior Application no longer stands abandoned.

Clearly the trademark practitioner in the Junior Application ought not to simply take a nap.  The practitioner ought to check the status of the Senior Application daily.  On the exact day that the USPTO declares the Senior Application to be abandoned, the practitioner should take a couple of steps:

  • e-file a request that the suspension be lifted, and
  • telephone the Examining Attorney to nudge the Examining Attorney to take a look at the Junior Application.

The goal of course is to get the Junior Application approved for publication before the snoozing applicant in the Senior Application gets around to filing a petition to revive.

How can you learn, right away, that such a Senior Application has gone abandoned?

The usual way is to load the Senior Application into your Feathers.  You can then learn of the abandonment status change from your daily Feathers run.  (If you have not already done so, you should probably join the Feathers listserv.)  Some practitioners choose to make use of the “Trademark docket” widget in MyUSPTO for this purpose.  

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