Eleanor Finch
Trademarks are a critical component of brand identity and source identification for consumers. However, maintaining trademark rights requires continuous usage and adherence to regulatory requirements. Trademark abandonment occurs when a trademark is no longer actively used or is allowed to lapse by the owner, resulting in the loss of exclusive rights. This can happen through non-use for a significant duration, typically three consecutive years, or by failing to meet regulatory obligations, such as responding to office actions or renewing registrations. Once a trademark is deemed abandoned, it loses the protective rights afforded by the Lanham Act, and other parties may reapply for similar trademarks. Understanding trademark abandonment is essential for businesses and brand owners to proactively manage their intellectual property and prevent the abandonment of their trademarks.
| Characteristics | Values |
|---|---|
| Non-use of a trademark | For three consecutive years, non-use creates a legal presumption that the mark has been abandoned. |
| Intent to resume use | The trademark owner must show intent to resume use within a reasonably foreseeable time. |
| Failure to respond to office actions | Failure to respond to an office action or statement of use can result in abandonment. |
| Failure to renew | Trademark registrations must be renewed periodically, and failure to do so may result in abandonment. |
| Non-compliance with statutory timelines | Non-compliance with timelines during opposition proceedings, such as filing counterstatements or submitting evidence, can lead to abandonment. |
| Voluntary abandonment | Trademark owners may voluntarily abandon a trademark as part of a business strategy or rebranding. |
| Loss of exclusive rights | Abandonment results in the loss of exclusive rights to the trademark, allowing other parties to reapply for an identical or similar mark. |
| Risk of brand dilution | Without exclusive ownership, the value of the trademark may diminish as it can be used by other parties. |
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What You'll Learn
Non-use for three consecutive years
Non-use of a trademark for three consecutive years creates a legal presumption that the mark has been abandoned. This presumption shifts the burden of proof onto the trademark owner. They must demonstrate that the mark has been in use during the period in question or that they intend to resume use.
For example, a trademark owner may attempt to provide evidence of special circumstances to show that non-use of the mark was temporary and that they intend to resume usage. They could also provide examples of limited use or other commercial efforts to demonstrate their intention to resume use of the mark within a reasonably foreseeable time.
If there is not three years of consecutive non-use, the burden remains with the party bringing the claim to show non-use and lack of intent to resume use by a preponderance of evidence. This is a difficult burden for a party to meet. An opposer or petitioner can present a case of non-use by showing the applicant or registrant's inability to present any evidence that there was use of the mark in commerce. If this occurs, the burden shifts to the applicant or registrant to rebut the case, similar to an abandonment claim.
Trademark abandonment, therefore, requires two elements: non-use of a mark and certain intentions of the trademark owner. According to 15 USC 1127, a trademark is considered abandoned if "its use has been discontinued with [an] intent not to resume such use." The intent not to resume may be inferred from circumstances.
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Intent not to resume use
A trademark is considered abandoned if "its use has been discontinued with intent not to resume such use". The intent not to resume may be inferred from circumstances. For example, if there is non-use for three consecutive years, there is a presumption of abandonment, and the burden shifts to the trademark owner to show use during this period or that there was intent to resume use of the mark within a reasonably foreseeable time.
The Trademark Trial and Appeal Board (TTAB) considers a claim of an "intent to commence use" equivalent to a claim of an "intent to resume use". If a trademark owner can provide evidence of special circumstances, they may be able to show that non-use of the mark was temporary and that they intend to resume usage. Examples of limited use or other commercial efforts to show intent to resume use of the mark in the reasonably foreseeable future may also be provided.
An opposer or petitioner can present a case of non-use by showing the applicant or registrant's inability to present any evidence that there was use of the mark in commerce. If this occurs, the burden shifts to the applicant or registrant to rebut the case. If the applicant files with the USPTO based on use of the mark, then there must be use in connection with all the goods and services identified in the application before the filing of the application.
If there isn't three years of consecutive non-use, then the burden remains with the party bringing the claim to show non-use and lack of intent to resume use by a preponderance of evidence. This is a difficult burden for a party to meet.
Trademark abandonment should be distinguished from abandonment of a trademark application, which results from the failure of an applicant to respond timely to certain deadlines. For example, failure to respond to an Office Action or to file a Statement of Use can result in abandonment of an application. Abandoning a trademark application does not necessarily mean that an owner has abandoned trademark rights. It is possible for an owner to continue using a trademark even if its application was abandoned.
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Failure to respond to office actions
The office action will contain either a procedural or substantive objection, defect, or rejection of the trademark application. It will outline what, if anything, can be done to remedy it. The applicant will then have a designated time frame, typically three months, to provide a complete response to the issues raised. For Madrid applications under Section 66(a), the deadline for responding is six months, and no extensions are permitted.
If the applicant does not respond, or the response does not satisfy the examining attorney, the application will be abandoned. The applicant may, however, file an appeal with the Trademark Trial and Appeal Board (TTAB).
The most common substantive rejections in a trademark office action refer to the proposed mark being “confusingly similar” to another existing or applied-for trademark. Another common rejection is a descriptiveness rejection, where the trademark merely describes the nature of the goods or services outlined in the application and is therefore not sufficiently distinct to warrant exclusive trademark rights.
In some cases, the examining attorney may suggest that the applicant call or email them to resolve minor legal problems, such as clarifying the goods or services in question. This process can help move the trademark toward registration faster. However, any email correspondence will become public on the USPTO website.
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Non-compliance with statutory timelines
Non-adherence to statutory timelines can have significant legal and financial repercussions for trademark owners. Missing deadlines may result in the forfeiture of trademark rights, exposing the owner to increased legal risks and potential infringement. The financial implications can be substantial, with direct costs associated with re-filing and the broader economic impact of lost brand protection.
Trademark maintenance requires compliance with critical deadlines, including renewal application submissions, use requirements timelines, and opposition period durations. These timelines are crucial for sustaining trademark rights and protecting intellectual property. Renewal applications, in particular, must typically be filed between the fifth and sixth years after registration and subsequently every ten years.
Failure to meet these deadlines can lead to trademark abandonment, as defined by Section 45 of the Lanham Act. Abandonment occurs when a trademark has been discontinued with the intent not to resume use. Non-use of a trademark for three consecutive years creates a legal presumption of abandonment, shifting the burden to the trademark owner to demonstrate continued use or intent to resume use.
To prevent abandonment, trademark owners should establish effective application strategies, including setting renewal reminders well in advance of deadlines. Additionally, proactive management of renewal applications is essential for preserving trademark rights and reinforcing brand integrity. Trademark usage must be substantiated through adequate documentation, which may vary depending on the jurisdiction.
In the event of missing a statutory deadline, trademark owners may have the opportunity to revive their application or file a petition for reinstatement. However, these processes are subject to specific requirements and timelines that must be strictly followed. It is important for trademark owners to be diligent in managing their trademarks to avoid the legal and financial consequences of non-compliance with statutory timelines.
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Voluntary withdrawal
Trademark abandonment can have significant legal and business consequences. It occurs when a trademark is no longer in active use or has been deliberately or unintentionally allowed to lapse by the owner. This indicates that the owner has absolutely relinquished their rights over the trademark. While mere non-use of a trademark for a few years may not constitute abandonment, it can occur when specific regulatory requirements are unmet, such as failing to comply with office actions or missing renewal deadlines.
To prevent trademark abandonment, trademark owners should proactively manage their trademark portfolio through consistent use, timely renewals, and legal guidance. This helps protect their intellectual property and ensures their brand identity remains secure. Abandoning a trademark application does not necessarily mean that an owner has abandoned trademark rights. It is possible for an owner to continue using a trademark even if its application was abandoned. However, if a trademark holder no longer uses the trademark or fails to enforce their trademark rights, they may lose those rights.
Trademark rights can be maintained indefinitely as long as the mark continues to be used in conjunction with the sale of goods or services in interstate commerce. However, if a trademark is not continuously used, it may be deemed abandoned, and the owner may lose their rights. Therefore, it is essential for trademark owners to understand the requirements for maintaining their trademarks and take the necessary steps to prevent abandonment.
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Frequently asked questions
Trademark abandonment occurs when a trademark is no longer in active use and has been allowed to lapse by the owner. This can be done voluntarily or involuntarily. Abandonment can also occur when specific regulatory requirements are unmet, such as failing to comply with office actions or missing renewal deadlines.
When a trademark is deemed "abandoned", it loses the protective rights granted by the Lanham Act. This means that other parties can reapply for an identical or similar trademark, potentially diluting the brand and diminishing its value.
To prevent trademark abandonment, it is important to proactively manage your trademark portfolio through consistent use, timely renewals, and legal guidance. Ensure that you meet all statutory requirements and take measures to prevent unauthorized use of your trademark.
If you have inadvertently abandoned your trademark application, you may be able to file a petition to revive it within two months of receiving a Notice of Abandonment from the USPTO. If you did not receive the notice, you have up to six months from the date of abandonment to file a petition. Alternatively, you can regain some protective rights by simply beginning to use the trademark in commerce again. However, this will only provide limited protections, and it may be more difficult to assert your ownership.
