Trademark Abandonment: Everything You Need to Know

Trademark Abandonment: What Is It?

Trademark abandonment happens when the validity of a trademark is questioned. This happens when:

• The registered trademark was not used
• The registered trademark was not used correctly. This can include:
  • Trademark dilution
  • Excessive trademark licensing
  • Failure to enforce exclusive rights to a trademark
• The trademark registration has expired
• The trademark has been expressly abandoned

Why Are Trademarks Important?

The United States Patent and Trademark Office (USPTO) registers trademarks. These marks apply to any of the following that directly relate to a company or its products and services:

• Business names
• Slogans
• Phrases
• Logos
• Symbols 

They are necessary for protecting intellectual property rights in the course of interstate commerce.

After registering a trademark, you get exclusive rights to use the mark to make money. Just because you have a trademark doesn't mean you are protected automatically, though. You must defend your own mark activity. You must do this by finding and stopping infringers yourself.

Why Is Trademark Abandonment Important?

Also known as dead trademarks, abandoned marks can cause you to forfeit your exclusive rights. They generally happen in one of four ways.

Nonuse of a Trademark

Federal law and the Lanham Act say that trademark owners must use their marks when they register. They can't just reserve marks for later use or to keep others from using them. Instead, businesses must actually use them as a part of their business. They must use their trademarks as intended. It doesn't count to just use it as a token.

In general, a trademark is considered to be in "use in commerce" when it's affixed to a business's:

• Goods 
• Containers
• Displays
• Labels 

A company can also feature a trademark on associated documents if the mark doesn't fit on the product itself.

A trademark falls into "nonuse" when a business stops using it and doesn't intend to continue use. Typically, the threshold for nonuse is three consecutive years. Once the trademark owner has technically abandoned the mark, third parties can begin to use it. They can even sell the same types of goods and services.

Trademark owners can often get back their rights even after a long period of without using them. However, it is up to the trademark owner to prove that they want to start using it again. Trademark owners may be able to make the following cases to enforce their rights:

• Nonuse Rebuttal: To prove that they intend to continue to use the trademark, businesses must show evidence. This can include: 
  • Advertising or internal presentations that feature the trademark 
  • Proof of distribution of the trademarked goods
• Excusable Nonuse: This happens when special situations prevent trademark owners from using the mark. They must show proof of situations out of their control. This could include seeking regulatory approval for production of the goods.
• Trademark Assignment: Trademark owners can license or assign their rights to a third party. Doing this can keep trademark rights active. This is true even if the original owner doesn't directly produce the goods or services.

If the trademark owner successfully defends nonuse, the trademark isn't considered abandoned. If sufficient proof doesn't exist, however, the trademark can be considered abandoned.

Improper Use of a Trademark

Even when they actively use a trademark, businesses can still risk abandonment. If they don't use their exclusive rights, other people can take advantage. This type of abandonment typically falls into three categories:

• Genericism: This happens when a trademarked term becomes too common.
• Excessive Licensing: This happens when a trademark owner licenses rights but fails to maintain control over the trademark.
• Failure to Enforce: This happens when a trademark owner doesn't actively prevent unauthorized third-party use of the trademark. To enforce a trademark effectively, a trademark owner must:
  • Identify trademark infringement
  • Send cease and desist letters
  • Sue if necessary.

All of these things can lead to loss of significance. A trademark owner may have to abandon rights to a trademark with insufficient significance.

Lapse of Trademark Registration

The initial trademark registration period lasts for 10 years. Trademarks can last for an indefinite period of time. However, you have to maintain them to keep them.

• After five years of continual use, trademark owners must file a Section 8 Affidavit to keep their rights. 
• At the 10-year mark, they must file a Section 9 Affidavit to renew their trademark.

Trademark owners who don't file these maintenance documents risk letting their registration lapse. This can result in the USPTO canceling the trademark and considering it abandoned. After a registration lapse, third parties may be able to use the trademark.

Often, however, the original trademark owner can make a strong case for non-abandonment. Original trademark owners retain some level of common-law protection over their rights. They may be able to demonstrate a history of using the trademark in order to resume use and regain their exclusive rights.

Express Abandonment of a Trademark

In some cases, trademark applicants have to withdraw their registration documents. This is known as express abandonment.

This typically happens when an applicant tries to register a trademark that's too similar to another trademark. The owner of the original mark can oppose the new mark's registration by sending a cease and desist letter.

The applicant can continue to pursue the trademark registration. However, the dispute may lead to legal action. A Trademark Trial and Appeal Board (TTAB) proceeding decides whether a trademark will be registered or abandoned. The TTAB doesn't award damages or order injunctions

Frequently Asked Questions

• How Long Do Trademarks Last?

They can last indefinitely. You must use them continually, unless you can claim excusable nonuse. You must also request registration renewals every 10 years.

• Does Abandonment Have to Occur Nationwide?

Federal trademarks apply to interstate commerce. Nonuse in a limited geographic area doesn't signal trademark abandonment. The exception is if the trademark owner limits use to within state lines. Usually, however, a successful abandonment case must argue nationwide nonuse.

• Can I Resume Using a Trademark I Haven't Used in Awhile?

The answer depends on your unique situation. First, make sure that the trademark is still registered. Next, add up the amount of time that has passed since you last use it. You should find out if any trademark infringement has occurred in the meantime. If you have any concerns, contact a trademark attorney for professional advice.

• How Can I Oppose an Infringing Trademark?

You can oppose a third party's trademark registration if you feel that it infringes on your own. Do this within one month of the infringing trademark's publication. The publication is called "Official Gazette of the Patent and Trademark Office." The TTAB will hear your case and determine a final ruling about the trademark registration.

If you need help with trademark abandonment, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law. They average 14 years of legal experience. This includes work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.