Revival of Canceled Trademark

A United States registered trademark generally needs to be renewed between the fifth and sixth year after its initial registration, and then every ten years thereafter.  CLICK HERE for more information on the renewal requirements.  If the required maintenance documents (like the Section 8 Declaration of Use and/or Section 9 Renewal Application) are not filed by the deadline, the trademark registration will be canceled.

Can a cancelled trademark be revived?

It is unlikely that a trademark registration cancelled due to the failure to file the required statutory maintenance filings (Section 8 Declaration of Use and/or Section 9 Renewal Application) can be revived or reinstated. The United States Patent and Trademark Office (USPTO) generally has no authority to waive or extend these specific deadlines.

What procedure must be followed if it cannot be revived?

If your trademark registration is cancelled for this reason, your primary option is to file a new trademark application with USPTO.

Here's what that typically involves:

1. Conduct a new trademark search: Even if you previously had a registration, you'll want to ensure the mark is still available and that no one else has begun using a similar mark in the interim.

1. Prepare and file a new trademark application: This is essentially starting the registration process from scratch. You'll need to provide all the necessary information, including details about the mark, its use in commerce, and a specimen showing its use.

1. Claim original dates of first use (if applicable): If you have continuously used the mark in commerce, you can typically claim your original dates of first use in the new application.

1. Consider a "Request to Make Special" (expedited examination): In some cases, if you previously owned the trademark and it was cancelled, you may be able to file a "Request to Make Special" to ask the USPTO to expedite the examination of your new application. This could potentially speed up the process.

Important Considerations:

• Grace Period: It's crucial to be aware that there is a six-month grace period after the original renewal deadline. If you file the necessary documents during this grace period, your trademark can still be maintained, though you will incur additional late fees. If you miss this grace period, the cancellation is generally final.
  
• "Abandoned" Applications vs. "Cancelled" Registrations: It's important to distinguish between "abandoned" trademark applications and "cancelled" trademark registrations.

• Abandoned applications (often due to failure to respond to an Office Action during the examination phase) can sometimes be revived if the abandonment was unintentional and a petition is filed within specific timeframes (typically two months from the Notice of Abandonment, or up to six months if you didn't receive notice but learned of the abandonment later).
  
• Cancelled registrations (due to failure to file maintenance documents) are generally not subject to the same revival procedures.

• USPTO Error: In very limited circumstances, if a trademark was cancelled due to a clear USPTO error, a "Request for Reinstatement" might be possible without a fee. However, simply not receiving a notice is typically not considered a USPTO error unless it was sent to an incorrect address due to the USPTO's mistake.

• Legal Counsel: Given the complexities of trademark law, it is highly recommended to consult with an experienced trademark attorney if your trademark has been cancelled. They can help you understand your specific situation, explore any potential avenues for revival, and guide you through the process of filing a new application if necessary.