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 lead to an abandoned trademark.
Legal protection for trademarks can exist only as long as the trademark is actually being used in interstate commerce. If an owner continually uses and maintains a trademark, a trademark can last forever. However, if an owner fails to use a trademark for a period of time, then the trademark will become abandoned.
What is an Abandoned Trademark?
A trademark marked dead at the U.S. Patent and Trademark Office is considered an abandoned trademark. At the federal level, trademarks are governed by the Lanham Act. See 15 U.S.C. §§ 1051 et seq. The Lanham Act defines the legal requirements that must be met for a trademark to be registered. Likewise, the Lanham Act defines the conditions under which a trademark can and will be deemed to be abandoned. See 15 U.S.C. §1127. Section 1127 states that abandonment occurs if the use of a trademark has been discontinued with intent not to resume such use. The provision further states that the use must be bona fide use made in the ordinary course of trade, and that nonuse for three consecutive years is presumptive abandonment. In other words, trademark abandonment requires that two legal elements be shown:
- Discontinued use of the trademark or use that is not a bona fide commercial use
- Coupled with an intent not to resume use
As a practical matter, when the courts consider claims of abandonment, the elements are taken in sequential order. Unless there is actual evidence that the trademark has not been used, there is no need to evaluate the second element. Courts have come to this conclusion based on the statute’s use of the word “resume.” As one court has stated: “An intent not to resume use presupposes that the use has already ceased …” See Electro Source v. Brandess-Kalt-Aetna Group, Inc., 458 F. 3d 931 (9th Cir. 2006) (emphasis in original).
A 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.
If a Trademark is Abandoned Can I Use it?
Even if the registration with the USPTO has been abandoned or not renewed, the original owner or some third party might still be using the trademark. This would give the original owner or other third party priority.
Thus, if you believe that a trademark has been abandoned and you want to begin using that trademark, several steps should be taken. First, you should be sure that the trademark has in fact been abandoned by its owner and that no other third party has begun use. This can be accomplished by doing things like searching the Internet or by attempting to reach the business. If it appears that use has ceased, next a trademark search should be conducted to be sure that no other parties are using the trademark. Lastly, a trademark application should be filed with the USPTO to claim the trademark.
If there is some doubt about whether a trademark registration has been abandoned, one option is to file a trademark cancellation with the Trademark Trial and Appeal Board. Once a petition to cancel is filed, the registrant will have 40 days to file an answer. If no answer is filed, the registration will abandon.
Common Grounds for Presumptive 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
- Sale of a business
- 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 Office is hesitant to declare abandonment, they only tolerate temporary periods of non-use.
Generally speaking, a trademark is used “in commerce” if the trademark is affixed to or located on things such as:
- The goods themselves
- In-store displays
- Website pages
- Mailing and packing labels
As long as there is some continued use of a trademark, there is little danger of a trademark being deemed abandoned. That is, the quantity of use-in-commerce is usually not relevant to the question of trademark abandonment as long as there is some use-in-commerce. This was the holding of the case of Christian Faith Fellowship Church v. Adidas AG, 841 F. 3d 986 (Federal Circuit 2016) where the use-in-commerce requirement was met based on the sale of just two hats depicting the trademark at issue.
What is Excusable Nonuse?
There are some circumstances where nonuse can be excused. The effect of showing excusable nonuse is to extend the general three-year presumption of abandonment. The Trademark Office provides a non-exhaustive list where excusable nonuse might be found. Items on the list include:
- Trade embargoes
- Sale of a business
- Retooling a manufacturing plant
- Low volume products that cannot be made quickly, like airplanes, when there are orders on hand and activity toward filling them
- Illness, fire, and other catastrophes
In general, for these factual matters to operate as excusable nonuse, the owner of the trademark must be ready and able to continue use of the trademark in commerce once the specified condition has been alleviated.
Filing a Petition to Revive
If a trademark has recently been abandoned inadvertently, a Petition to Revive may be filed within 2 months. For trademark renewals, there is a 6 month grace period but after that a petition to revive is no longer an option.
For assistance in registering your trademark or if you have an issue with an abandoned trademark, please contact us today.