The short answer: It depends on whether the abandonment will work for you or against you. Since even your decision to abandon your trademark application has its legal and practical implications, you should seriously considering hiring an experienced trademark attorney.
With or without an attorney, here are a few things that you must consider when deciding whether to abandon or not your application.
Consider the Grounds for Rejection
The action letter, or the rejection letter issued by the USPTO after the examining attorney’s initial examination of you application has been completed, contains the valid grounds for rejection. These grounds can range from technical grounds (e.g., procedural mistake) to substantive grounds (e.g. likelihood of confusion), and each ground should be answered satisfactorily by the patent applicant for the application process to proceed.
From the careful consideration of the grounds stated in the action letter, you can make a decision of abandonment or continuance. You may, for example, abandon the application in case of a rejection based on descriptiveness – if your mark is descriptive according to the standards set by the USPTO, then getting it registered doesn’t give you extra protection in case of an infringement. You can’t sue everybody who uses the descriptive words used in your mark since these are generic by nature.
If the rejection was based on the likelihood of confusion, you have to consider whether the costs in time, energy and money will be worth the benefits in name recognition and recall. You must consider, too, the possibility of a trademark infringement lawsuit if you continue using the mark.
Let’s say that you decide to abandon your application. You should ideally make an express statement of abandonment by filing a Request for Express Abandonment (Withdrawal) of Application through the Trademark Electronic Application System (TEAS), an online system at the USPTO official website.
Beware the Consequences of Abandonment
Lest you think that abandonment of your trademark application is easy – look, Ma, no consequences – it isn’t. Keep in mind that there are several ways of abandoning your mark and with these ways come consequences that you should be prepared to deal with.
Let’s assume that for one reason or another, you stopped using the mark for a prolonged period or you failed to maintain quality control over its use. Under the trademark laws, you are considered as having abandoned the trademark and, thus, you will lose the exclusive right to its use.
What can you do if the USPTO sends an action letter expressing final rejection of your mark as non-registrable? You can appeal to the Trademark Trial and Appeal Board in case the reason for rejection was substantive; file a petition to the director if the reason for rejection was technical or procedural; request the examining attorney to make another examination; or amend the application and seek for registration on the Supplemental Register in case of a descriptive mark-based rejection.
And, of course, you can abandon the application and give up the exclusive right to your mark.