In the United States, securing rights to a trademark ultimately relies on being the first to use a trademark. Therefore, establishing rights to a trademark (common law or otherwise) and then failing to use the trademark for an extended period of time without intending to resume use can automatically mean abandonment of rights.
Common Grounds for Presumption of Abandonment
According to the Lanham Act, failing to use a trademark for at least three consecutive years will result in a rebuttable presumption of abandonment. Common factors that can lead to abandonment include:
- Public statements regarding changing name
- Discontinuing products or services under the trademark
- Failure to promote or advertise products or services under the trademark
- Infrequent sales or shipments of products or services
- The trademark owner is not established in the trade and has not made attempts to do so
- The trademark has become a victim of “genericide” and thus no longer functions as a trademark
- Failure to enforce rights by policing use of the trademark
Appearance of non-use does not automatically mean a loss of rights, but the burden of proving the intent to resume use rests on the trademark owner. It is important to note that while the U.S. Patent and Trademark Offices is hesitant to declare abandonment, they only tolerate temporary periods of non-use.
Reviving an Abandoned Trademark
Under U.S. law, failure to use a trademark for three years is considered prima facie evidence of abandonment. At that point, the burden of proving otherwise rests on the trademark owner. In order to revive an abandoned trademark, the owner must provide clear and convincing evidence of use.
There are a number of cases in which a trademark owner can retain rights as long as there is continued public recognition of the trademark, despite a lack of sales over several years. The owner must demonstrate plans to resume using the trademark in commerce.
Acquiring an Abandoned Trademark
It is often the case that individuals and businesses discover that their chosen trademark is already in use after searching the U.S. Patent and Trademark Office’s website. However, if the trademark is shown to be abandoned and there is no one else attempting to register the trademark, it is possible to acquire the trademark rights as well as obtain federal registration with the USPTO.
Aggressive Trademark Litigator
If you are seeking to reclaim an abandoned trademark or have concerns regarding a trademark litigation matter, please feel free to Contact Us. Our experienced team can provide the insight and guidance you need to make the best decision for your business.