Asked in Trademark for California

Q: Registered a trademark, however it appears as abandoned or failure to response. Is there a quick solution to this?

Trademark name : CELOSA ROSE

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2 Lawyer Answers
Dane E. Johnson
Dane E. Johnson
  • Trademarks Lawyer
  • Portland, OR
  • Licensed in California

A: The USPTO record for the CELOSA ROSE trademark application shows a status of abandoned “because the applicant failed to respond or filed a late response to an Office action.” The records also show that the USPTO requested that the applicant “either provide documentation to support applicant’s domicile address or appoint a U.S. licensed attorney.”

It is sometimes possible to revive a trademark that has unintentionally been abandoned by filing a Petition to Revive Abandoned Application - Failure to Respond Timely to Office Action form. But the petition must be filed within two months of the issue date of the notice of abandonment. If the deadline has passed, an abandoned trademark cannot be revived.

Registration might still be possible with a new application. A good step would be retaining an experienced trademark lawyer to search for whether the desired mark still appears available. Someone else might have filed the same or a similar application while the previous application was pending. An attorney can also assist in handling any other Office actions and moving the application to a successful trademark registration.

Fritz-Howard Raymond Clapp agrees with this answer

Fritz-Howard Raymond Clapp
Fritz-Howard Raymond Clapp PRO label
  • Trademarks Lawyer
  • Beverly Hills, CA
  • Licensed in California

A: The application was to register CELOSA ROSE on the basis of "intent to use" the mark for Mezcal, and the trademark examiner issued an "Office Action" in April 2021 requiring a translation, to which there was a response, but then issued another office action in May 2021 requesting information regarding applicant's domicile. There being no response within six months, the application was deemed abandoned.

Apart from these two deficiencies, the application was otherwise likely to be cleared for publication and eventual registration.

The applicant may file a new application based on actual (rather than intended) use, whenever that happens, and make sure that the new application has the needed translation and domicile information that the first application did not supply.

The applicant should consult a qualified trademark attorney to advise further and to file the new application to register the mark.

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