[E-trademarks] [EXT] Re: FW: Can't file Extension to Show Use

Tue Jul 1 18:56:26 UTC 2025

Is everyone needing to call the ITU/Divisional Unit for every SOU deadline in which an amendment to delete the ITU basis or classes with the ITU basis were filed at some point less than 6 months before that deadline because the deletion is not processed? Am I correctly recalling that any class not fully deleted by the SOU deadline that is part of a Notice of Allowance and does not have an SOU or extension request filed at that deadline will cause the whole application to go abandoned?

Alex Butterman
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Janice Housey via E-trademarks
Sent: Saturday, June 28, 2025 8:30 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Janice Housey <jhousey at litmuslaw.com>
Subject: [EXT] Re: [E-trademarks] FW: Can't file Extension to Show Use

Thanks for this information!  And the problems with serious ITU lags and issues go back to at least September 2024.

Janice Housey

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Ken Boone via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Friday, June 27, 2025 2:15 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Ken Boone <boondogles at hotmail.com<mailto:boondogles at hotmail.com>>
Subject: Re: [E-trademarks] FW: Can't file Extension to Show Use

>> IMHO, ITU seems to have suffered significantly from the reduction in staffing.

On January 29th, I copied the list of ITU employees and other Trademark offices from the employee locator to an Excel spreadsheet (curious about the impact of the “fork in the road” on employee counts in the various trademark offices).  There were 10 ITU employees on January 29th, and the same 10 ITU employee names appear on the employee locator today.  The employee locator shows no reduction in staffing (or any new employees) for ITU since January 29th.

Ken Boone

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Michael Brown via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Friday, June 27, 2025 10:32 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Michael Brown <michaeljbrownlaw at gmail.com<mailto:michaeljbrownlaw at gmail.com>>
Subject: Re: [E-trademarks] FW: Can't file Extension to Show Use

Lori,

Rather than a petition to revive, file a Request for Reinstatement, also in the Petitions sections of TEAS. There is no fee required, and it sounds like the abandonment was by office error.

Then, wait for the application to get back on track. I filed for reinstatement in December, where we filed to delete the ITU goods after a Notice of Allowance, which was not processed resulting in abandonment of the entire application. While the application was revived in January (about six weeks after the reinstatement filing), I am still waiting for the application to proceed to registration.

IMHO, ITU seems to have suffered significantly from the reduction in staffing.

Best regards,
Michael

Michael Brown
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On Fri, Jun 27, 2025 at 11:07 AM Lori Milvain via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

What are folks doing currently when you are blocked from filing a Request for Extension of Time to Show Use because the previous extension filed several months ago has not been acted on by the USPTO?  This one included a Request to Divide and the examiner just finally granted the first extension (after the deadline for the next one) but issued a notice of abandonment.  Why should we have to pay for a petition to revive? Any way to get around this?

Thanks.

Lori T. Milvain, Esq.

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