Resurrecting an Abandoned Trademark Application

This article is meant to help anyone who had the unfortunate and often horrific experience of realizing that their trademark application was accidentally abandoned, and to provide some advice and hope on how to reinstate or revive the application and avoid having to re-file and start the process over again.

While there is no guidance on the Canadian Intellectual Property’s (CIPO’s) website on this topic, the below is based on direct experience and an understanding of the Trademarks Act and Regulations.

Abandonment of a trademark application results from the lack of a response to an examiner’s office action wherein the application required some amendments to meet formal requirements or a response to an outright rejection of some sort. Once the deadline is missed, CIPO will put the trademark application in “default” and issue a final two-month grace-period at the end of the deadline for a response to be filed, warning that not responding within the second deadline will result in the application being considered “abandoned”.

Canadian trademark applications fall within two separate categories: 1) the ones filed directly with CIPO, usually termed National Applications, and 2) the ones that are designated for Canada and are filed through the Madrid Protocol managed by the World Intellectual Property Organization (WIPO) which is reserved for foreign applicants filing into Canada, and reciprocally, for Canadians filing their trademarks into other countries.

This article addresses situations where the abandonment was due to a lack of action on the part of the Applicant, as opposed to an error on the part of CIPO who did not process correspondence that was sent in.

The Canadian Trademarks Act and Regulations makes no distinction between a voluntary or intentional abandonment or withdrawal of the trademark application and an abandonment resulting from a lack of response.

NATIONAL APPLICATIONS

The Canadian Trademarks Act and Regulations contain no reinstatement provisions for an abandoned trademark application, however there is a mechanism for requesting a retroactive extension of time to a deadline that has already passed.

The sooner the retroactive extension is requested and the fee is paid ($125 CAD in 2023, $150 CAD in 2024), the better the chances of the retroactive extension being granted. Detailed explanations need to be provided explaining the reasons why the deadline was not met for the retroactive extension to be granted. Issues with lost correspondence, a key person being ill, or other similar exceptional reasons are usually required. In the cases I handled, the Applicant came to me after they realized the abandonment of their application due to some lack of experience or knowledge on the processing of their application. CIPO can be very sympathetic to an individual who self-represented themselves (without a Canadian Trademarks Agent) and did not respond due to a lack of understanding.

MADRID PROTOCOL APPLICATIONS

Canada joined the Madrid Protocol in 2019, which is an international trademark system facilitating the filing of trademarks by owners into foreign jurisdictions. The system allows a single application to be activated or designated in about 130 countries and jurisdictions, avoiding the hassle and cost of filing individual applications in each one.

The Madrid Protocol has a built-in reinstatement/correction provision, whereby an Applicant would have nine months from the date of abandonment to request reinstatement of their accidentally abandoned application. This is a separate action from a retroactive extension request to respond to an examiner’s office action; I would recommend a simultaneous retroactive extension request as well. Again, reasons explaining why the deadline was missed are required.

It is advisable to include information as to how and when the applicant realized their application was abandoned, and the quick steps they took to obtain advice to remedy the abandonment.

A DISCRETIONARY POWER

Whether requesting reinstatement and/or a retroactive extension, these powers are discretionary on the part of the Registrar of Trademarks. Therefore, there is no guarantee that the reinstatement will be granted, but the richer in detail the request on why meeting the deadline was not reasonably avoidable given the circumstances, and the sooner it is filed (ideally within a few weeks, up to a few months of the abandonment) the greater the chances the Office will grant the reinstatement and/or retroactive extension. If successful, the reinstatement will avoid the costs of filing a new application and also the time to receive another office action, which ranges from 18 months for a Madrid Protocol application, and 52 months for a national application (at the date of this article).

For customized professional assistance on any case or situation, please consult qualified legal representation, which we are authorized and specialized to provide.

Contact Richard Whissell, a Partner and Trademark Agent at Perley-Robertson, Hill & McDougall LLP/s.r.l. at 613.566.2830 and/or [email protected].