218 Abandonment of Application
If an applicant files an express abandonment of an application that is the subject of a pending or granted request for extension of time to oppose, or if a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application that is the subject of a pending or granted request for extension of time to oppose is abandoned by the Office as the result of cancellation of the underlying international registration, [ Note 1.] the application stands abandoned and any pending request for an extension of time to oppose is moot. An application that has been abandoned is no longer subject to the filing of a new opposition. Any opposition filed on or after the filing date of the abandonment will not be considered, and the filing fee will be refunded. If the opposition was instituted prior to the Board’s knowledge of the filing of an express abandonment, the opposition will be dismissed as a nullity and the opposition fee will be refunded. [ Note 2.] Cf. TBMP § 602.01 (Withdrawal by Applicant), for information concerning abandonment of an application after the commencement of an opposition.
The abandonment of an application that is not the subject of an inter partes proceeding before the Board (i.e., an opposition, interference, or concurrent use proceeding) is without prejudice to the applicant. It is not necessary that applicant obtain a potential opposer’s consent thereto. [ Note 3.] Therefore, abandonment of an application during an extension of time to oppose is without prejudice (regardless of whether the potential opposer consents).
In contrast, after the commencement of an opposition, interference, or concurrent use proceeding, if an applicant files an express abandonment of its application (or if a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application is abandoned by the Office as the result of cancellation of the underlying international registration) without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant. [ Note 4.] However, if an application is abandoned after the commencement of an opposition, interference, or concurrent use proceeding, but before applicant has been notified thereof by the Board, the applicant will be given an opportunity to obtain the written consent of every adverse party, or to withdraw the abandonment and litigate the proceeding, failing which judgment shall be entered against applicant. [ Note 5.]
An applicant may expressly abandon its application by filing in the Office a written statement of abandonment or withdrawal of the application, signed by the applicant or by the applicant’s attorney or someone with legal authority to bind the applicant. [ Note 6.] An express abandonment (filed prior to commencement of an opposition) should be filed using TEAS in order to minimize the possibility that a paper-filed abandonment may not be associated with the file and acted upon prior to the institution of any opposition. Express abandonments filed prior to the commencement of an opposition should not be directed to the Board.
When an applicant files an express abandonment of an application that is the subject of a pending or a granted request for extension of time to oppose, or a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application is abandoned by the Office as the result of cancellation of the underlying international registration, the status of the application in USPTO databases reflects the abandonment. A further extension of time to oppose or a notice of opposition cannot be filed against an abandoned application via ESTTA. That is, ESTTA will not allow the processing of either a further extension of time to oppose or a notice of opposition. A potential opposer also may check the status of an application using USPTO databases, including TSDR, before pursuing a further extension of time to oppose or a notice of opposition.
NOTES:
1. If an international registration is cancelled by the International Bureau for any reason, the IB will notify the USPTO and the USPTO will abandon the corresponding Trademark Act § 66(a), 15 U.S.C. § 1141f(a) application. See 37 C.F.R. § 7.30. If the international registration is cancelled under Article 6(4) of the Madrid Protocol, the applicant may "transform" its abandoned Trademark Act § 66(a) application into one under Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051 or 15 U.S.C. § 1126. See 37 C.F.R. § 7.31. Although the transformed application retains the filing and priority date of the abandoned Trademark Act § 66(a) application, 37 C.F.R. § 7.31(b), it is reexamined under 37 C.F.R. § Part 2, and will be published for opposition, even if it had been published prior to transformation. 37 C.F.R. § 7.31(c). See TMEP § 1904.09, et seq., for information on transformation.
2. See 3PMC, LLC v. Huggins, 115 USPQ2d 1488, 1489 (TTAB 2015) (application abandoned on same day that notice of opposition was filed was not subject to opposition);Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079, 1081 n.1 (TTAB 1992); In re First National Bank of Boston, 199 USPQ 296, 297 (TTAB 1978) (notice of opposition and abandonment both filed on same day; no opposition).
3. See 37 C.F.R. § 2.68.
4. See 37 C.F.R. § 2.135.
5. See In re First National Bank of Boston, 199 USPQ 296, 301 (TTAB 1978). Cf. TBMP § 602.01 (abandonment of application during inter partes proceeding).
6. See 37 C.F.R. § 2.68.