How to Abandon a Trademark with the USPTO
The TEAS filing form used to expressly abandon a trademark (withdraw from prosecution or registration) is found at http://www.uspto.gov/trademarks/teas/index.jsp. (The exact links to TEAS forms change from time to time but this procedure should work to get to the proper form. ) Choose Miscellaneous forms and Request for Express Abandonment (Withdrawal ) of Application. You will be prompted to enter in the serial number of the application and choose a number of different options. This form is withdrawing your own application or registration, not to cancel someone else’s application or registration. The following instructions are given by the USPTO with the form:
The applicant may use this form to request express abandonment, i.e., withdrawal, of its own pending application.
NOTE: Only the following may request express abandonment: (1) the applicant; (2) a person(s) with legal authority to bind the applicant, such as a corporate officer of a U.S. corporate applicant or foreign corporation or company; a general partner of a partnership applicant; each joint applicant if joint applicants; an officer of an unincorporated organization; an officer or manager of a limited liability company, etc. See TMEP §§712.01 et seq.; or (3) the applicant's attorney. If the application is currently subject to an appeal, opposition, or concurrent use proceeding before the Trademark Trial and Appeal Board, you must file this request directly with the Board. You may do so electronically, using the Board's electronic system, ESTTA.
NOTE: Filing of an Express Abandonment does not result in any refund of the original application fee. The fee is an initial processing fee, which is not refunded later, regardless of any expressed intent to cease prosecution of the application. WARNING: You may file this request up to the point of actual registration. However, if your application is already scheduled for printing of a registration certificate, which occurs approximately eight (8) weeks after the publication date, it may be too late to withdraw the application from the registration cycle. Therefore, although perhaps timely filed, your express abandonment will only be processed after cancellation of the inadvertently issued registration and restoration of your application to pendency; i.e., under this scenario, please be aware that significant delays in processing this filing will occur. . . .
NOTE: Only one application can be abandoned at a time; i.e., do not enter multiple serial numbers, but instead submit separate requests. NOTE: Once you file an express abandonment, it cannot be withdrawn except in an extraordinary situation upon petition to the Director under 37 C.F.R. §2.146(a)(3); TMEP §718.01.
Note: Effect of Express Abandonment on trademark: TMEP §718.01(b) Rights in the mark not affected. Except as provided in §2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Office, affect any rights that the applicant may have in the mark in the abandoned application.
Note about express abandonment and oppositions: TMEP 718.01 If the applicant files a written request to abandon the application after the commencement of an opposition proceeding, the request for abandonment must be filed with the Board, and must include the written consent of every adverse party to the proceeding. If the applicant files a request for abandonment without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant. 37 C.F.R. §2.135. If an applicant whose application is the subject of an opposition proceeding files an express abandonment of the application after the commencement of the opposition proceeding, but before receipt of the Board’s notice of the filing of the opposition, the Board will allow the applicant an opportunity to withdraw the abandonment because the abandonment, if not withdrawn, may result in entry of judgment against the applicant in the opposition. TBMP §602.01. It is not necessary to obtain consent of a potential opposer during an extension of time to oppose. TBMP §218.
Why would someone expressly abandon their trademark? One reason may be to avoid a conflict with another party. If another party has threatened or begun a legal action to stop the application, expressly abandoning a trademark ends its LIVE status very quickly. Often consent agreements worked out between parties involve expressly abandoning trademark applications, trademark registrations, trademark oppositions or trademark cancellations.
→Call Not Just Patents LLC with more questions at 1-651-500-7590. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.