An express abandonment of a trademark application is essentially a voluntary request that the United States Patent and Trademark Office (USPTO) terminate the registration process. There are many reasons why you might choose to expressly abandon your trademark application. For example:
- You’re no longer using your trademark in commerce
- You no longer have an intention to use your trademark in commerce
- A trademark opposition or concurrent use proceeding was filed against your application
- You entered into a settlement agreement with a third-party that requires express abandonment of your application
- You’ve filed a trademark appeal but decide you don’t want to risk an adverse ruling
What are the Consequences of Filing an Express Abandonment?
Assuming that your application isn’t the subject of a pending trademark opposition or concurrent use proceeding, the only consequence of filing an express abandonment of your trademark application with the USPTO is abandonment of the application. This is true even if an extension of time to oppose has been filed against your application, or if you’ve filed a trademark appeal with the Trademark Trial and Appeal Board (TTAB) after receiving a final office action. Although you wouldn’t be barred from filing a new trademark application for the identical mark for the same products/services sometime in the future, there’s absolutely no guarantee that your new application would be approved or that someone else wouldn’t have already secured a registration for a similar trademark that could prevent you from legally using and registering your mark. So, it’s certainly possible that expressly abandoning your application could lead to problems registering your trademark down the road under certain circumstances.
Now, if a trademark opposition or concurrent use proceeding has been filed against your trademark application, an express abandonment of your application could have very serious consequences. In those two cases, if you file an express abandonment without the written consent of every adverse party (i.e. the opposer or the concurrent use plaintiff), judgment will be entered against you and you’ll no longer have the right to register your trademark in the future. In other words, you would be barred from applying to register the identical (or substantially identical) trademark for the same (or substantially the same) products/services. So, if you wanted to avoid that outcome, you would need to get the written consent of every adverse party to the express abandonment of your application without prejudice.
Regardless of whether your application is the subject of an opposition or concurrent use proceeding, filing a express abandonment of your trademark application doesn’t affect any legitimate common law trademark rights you may own at the time of abandonment.
How Do I File an Express Abandonment of My Trademark Application?
The manner in which you file an express abandonment depends on the current status of your trademark application. If your trademark application isn’t the subject of an appeal, an opposition, or a concurrent use proceeding, then you should complete and submit the “Request for Express Abandonment of Application” form that’s available on the USPTO website. It doesn’t cost anything to file this form and the USPTO will generally email you a notice of abandonment within a few days after submitting the form.
On the other hand, if your trademark application is the subject of an appeal, an opposition, or a concurrent use proceeding, then you need to file the request to expressly abandon your trademark application directly with the TTAB. Please note that the TTAB doesn’t provide a form that you can simply fill out and submit. Rather, you’ll need to prepare your own express abandonment, file it using the ESTTA system, and serve it on the opposing party (generally via email). There’s no fee for submitting the express abandonment and the TTAB will generally act on it within a few weeks.
When Can I File an Express Abandonment?
You may file an express abandonment of your trademark application at any time no matter the status of the application. Doing so terminates the registration process and results in an abandoned trademark application. Your mark will be forever shown in the USPTO records as a dead trademark and people will be able to see that you expressly abandoned the application.
Do You Have Any Questions?
I’m experienced US trademark attorney Morris Turek. If you’re thinking about filing an express abandonment of your trademark application and are unsure about how doing so may affect your trademark rights, please reach out to me for your no-cost consultation. Don’t hesitate to call me at (314) 749-4059, shoot me an email at firstname.lastname@example.org, or send me a short message through my contact form located near the bottom of this page. I look forward to hearing from you soon.