How to revive a lapsed trademark registration?

Recently I had two clients call me with the same problem. They both had registered trademarks that had become abandoned and wanted to know what to do . The problem of trademarks lapsing or becoming abandoned is quite common in cases where clients register their own trademarks. This is because clients fail to file a Section 8 Declaration of Continued Use, which must filed between the 5th and 6th years after registration of a trademark. The Section 8 Declaration of Continued Use is a sworn statement by the owner of a trademark registration that the mark is still in use in commerce. If the Section 8 Declaration of Continued Use is not filed then the Trademark Office (USPTO) will cancel the trademark registration. So that is how trademarks inadvertently become abandoned.

Now to the solution. Unfortunately, there is no procedure to revive an abandoned trademark registration. Thus, it is best to re-apply for the trademark registration without any delay. This was what the first client ended up doing. Unfortunately for the second client, a third party had applied for registration of the same mark for similar goods and services. Re-applying for registration of the abandoned mark would almost certainly have led to a rejection based on the third party application on the grounds that the two marks were “confusingly similar”. The client could have asserted common law trademark rights against the third party, but the costs would have been at least $100k. In the end the client opted to refile for the trademark registration with the intention of negotiating a co-existence agreement with the third party at the appropriate stage of trademark prosecution.

The moral of the story is to remember to file the Section 8 Declaration of Continued Use between the 5th and 6th years after the trademark registration date. The next best thing is to re-apply for registration of a lapsed trademark registration without any delay so that third parties do not acquire competing rights.

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