How to avoid abandonment of a trademark

Infinite duration is one of several benefits of owning a trademark; however, a trademark may be lost or abandoned. According to the International Trademark Association, a trademark can be lost through action or inaction of the trademark owner. “The most common way to lose rights in a mark is to stop using the mark with no intention to use it again. This is called ‘abandonment of trademark rights.’” This article will explore how a trademark may be lost or abandoned by its owner.

Standard of Proof for Abandonment

According to United States trademark law, the standard of proof for abandonment is a clear and convincing burden (PDF). In the legal field, standard of proof is “the level of certainty and the degree of evidence necessary to establish proof in a criminal or civil proceeding.” A clear and convincing burden is less difficult to prove than the burden in a criminal proceeding, which is beyond a reasonable doubt. Clear and convincing proof means “that the evidence presented by a party during the trial is more highly probable to be true than not.

Non-Use

While temporary or seasonal non-use of a mark does not necessarily constitute abandonment, periods of non-use accompanied by the intent not to resume using the mark constitutes abandonment in the United States. Additionally, it is important to note that non-use for a consecutive three-year period creates a presumption of abandonment of the mark unless someone comes forward to contest it, regardless of whether it is a registered mark.

Rebuttal of Non-Use

Once non-use has been asserted against a trademark owner, the trademark owner has the burden to introduce evidence showing their intent to resume use of the mark and evidence showing that the trademark owner intended to resume using the mark during the alleged consecutive three-year period. The International Trademark Association provides five examples of how a trademark owner may provide the evidence referred to above. They include the following:

  1. a showing that the trademark owner has sought regulatory approval for the goods and use cannot begin until the same is granted;
  2. a showing of the distributors approached for the goods;
  3. a showing of any purchased advertising for the goods that features the trademark;
  4. a production internal “story boards” or presentations referring to goods bearing the trademark; or
  5. a showing of an outside licensing agency that has been obtained.

Excusable Non-Use

Non-use may be excused because of circumstances outside of the trademark owner’s control in order to avoid abandonment of their mark. For example, the bankruptcy or insolvency of a trademark owner may be lead to excused non-use of the mark.

Improper Use of a Mark Leading to a Loss of Trademark

As mentioned in Essential Elements of a Trademark License Agreement, a trademark owner may license their trademark to another party, but the mark can be deemed abandoned if the trademark owner does not exercise adequate control over the use of its mark.

How to Expressly Abandon Your Application for a Mark

Finally, a trademark owner can expressly withdrawal or abandon their application for a trademark through the United States Patent and Trademark Office website.

For more information about abandonment of a mark, contact Revision Legal’s experienced trademark attorneys through the form on this page or call (855) 473-8474.

37 CFR 1.138 Express abandonment

  • (c) An applicant seeking to abandon an application to avoid publication of the application (37 CFR 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this paragraph including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicants should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.

Applicants seeking to abandon an application to avoid publication of the application are urged to do so by filing a petition under 37 CFR 1.138(c) and submitting a declaration of express abandonment and the fee set forth in 37 CFR 1.17(h) in sufficient time to permit the appropriate officials (Office of Data Management – Patent Publication Branch) to recognize the abandonment and remove the application from the publication process. Applicants may use form PTO/AIA/24A for applications filed on or after September 16, 2012 or form PTO/SB/24A for applications filed before September 16, 2012 for filing a petition for express abandonment to avoid publication under 37 CFR 1.138(c).(see MPEP § 1135) and file the petition electronically using EFS-Web, or mail the petition to Mail Stop Express Abandonment, or transmit the petition via facsimile to the Office at (571) 273 8300 (see MPEP § 1730). Filing the petition via EFS-Web will increase the chances of such petition being received by the appropriate officials in sufficient time to avoid publication of an application.

Any applicant seeking to abandon the application for the purpose of avoiding publication must take appropriate action well prior to the projected publication date. If the application is not recognized as abandoned at least four weeks prior to the projected publication date, the Office will not be able to avoid publication of the application. This does not imply that a request to expressly abandon an application to avoid publication filed prior to this four-week time frame will ensure that the Office will be able to remove an application from publication. The Office simply cannot ensure that it can remove an application from publication or avoid publication of application information any time after the publication process for the application is initiated (about 4 months prior to the projected publication date).

The petition for express abandonment to avoid publication will be granted when it is recognized in sufficient time to avoid publication and will be denied when it is not recognized in sufficient time to avoid publication of the application. This will avert the situation in which an applicant files a letter of express abandonment to avoid publication, the letter of express abandonment is not recognized in sufficient time to avoid publication, upon publication the applicant wishes to rescind the letter of express abandonment, and the Office cannot revive the application (once the letter of express abandonment is recognized) because the application was expressly and intentionally abandoned by the applicant.

Owners who wish to maintain ownership of their trademarks should register, use and renew them. A trademark that has fallen out of use for a significant period of time or has been misused may be considered abandoned. Another party then may be able to use the trademark without infringing on the original owner’s rights.

Abandonment means that a trademark has fallen into the public domain and another party may take it over. Once the other party begins to use the mark, it can prevent others from doing so. The trademark will therefore no longer be considered abandoned.

If a business is accused of infringing another’s trademark rights, it may use abandonment as a defense, claiming that the trademark was available at the time the business started to use it. Alternatively, the registration of a trademark may be cancelled if a business that wants to use it asks for a determination that the mark has been abandoned.

While trademarks are sometimes purposely abandoned because a business no longer needs or wants them, other times the abandonment is implied. A business that has worked hard to build recognition of and goodwill toward its mark may come to regret the inaction or misuse that leads to its loss of trademark rights.

What are indications of trademark abandonment?

Trademark abandonment may occur in several situations. Under the federal Lanham Act, nonuse of a trademark for three consecutive years is strong evidence of abandonment. The original owner of the mark, however, may be able to show that it did not intend to abandon the mark, presenting evidence that it used the mark in the ordinary course of trade or that it planned to resume use. Courts are typically reluctant to find abandonment of a trademark where the evidence of abandonment is not strong.

If a company goes out of business permanently and has no intent to begin again — and it has not sold its trademarks to anyone else — the trademarks can be considered abandoned. If, however, the company temporarily stops business, the assumption should not be made that it has abandoned its marks.

A business may simply announce that it will no longer use its trademarks, although this is rare. Once a trademark is abandoned and another party begins to use it, the original owner of the mark must not use it anymore.

How can trademark abandonment be avoided?

The most straightforward way to avoid trademark abandonment is to continue using the trademark on goods in commerce. There are other pitfalls to avoid, however.

When one business licenses its trademark to another business, it should supervise the use of the mark. If it fails to do so, some courts will find that the first business has granted a “naked” license and abandoned its rights to the mark. If the first business engages in proper supervision and ensures consistent quality, however, the interests of the public will be protected and the trademark will not be abandoned.

It is also important to make sure that the mark does not become generic. When a trademark becomes generic, it comes to stand for all goods of its kind, not just those that originated with one specific company. Aspirin, for instance, used to be associated only with Bayer. Over the years, however, the public associated it with the product itself, no matter who made it, and Bayer lost its rights to that trademark.

Please contact an attorney if you have questions about the abandonment of a trademark.

DISCLAIMER: This site and any information contained herein are intended for informational purposes only and should not be construed as legal advice. Seek competent counsel for advice on any legal matter.

In addition to using a trademark to market their own products or services, sometimes a trademark owner will license their trademark to another entity in exchange for royalties. This may be a larger business with a greater ability to make the product in large quantities. Some trademark owners may be unaware that they cannot simply license the trademark and trust the licensee to use it properly. They need to monitor the licensee’s actions related to the trademark, ensuring that the products or services provided by the licensee meet appropriate quality standards.

If you do not monitor the licensee, this is known as a naked license. A trademark owner may lose the rights to their trademark if the licensee’s products or services fail to meet quality standards. This may seem unduly harsh, but the purpose of the rule is to protect consumers.

Reasons for the Prohibition Against Naked Licenses

Trademarks are meant to inform consumers about the source of a product. Consumers rely on them in making purchases, since they trust a company that places a certain mark on its products to meet the standards associated with the mark. People develop an understanding of the quality that they can expect when they see a logo or another signifier on a product. Thus, while trademark law protects the owners of certain marks, it also protects consumers from making misguided decisions based on inaccurate or incomplete information.

If a company licenses its trademark to a company that makes similar but inferior products, a consumer likely would assume that the licensee’s products would meet the standards of the trademark owner. They would be unpleasantly surprised if they purchase the licensee’s products because the products would fall short of their expectations. (In some cases, they might even suffer health consequences.)

Failing to monitor the use of your trademark thus results in the loss of the trademark’s value in the marketplace. It no longer means anything about the products with which it is associated. This is sometimes known as the “abandonment” of a trademark. To avoid an abandonment problem, trademark owners usually include a provision in license agreements that requires the licensee to periodically send samples of products marketed under the trademark to the trademark owner.

Cancellation of Trademarks Based on Naked Licenses

When a wine company failed to monitor a company to which it had licensed its trademark, a federal appellate court canceled its trademark rights. In another case decided by a different federal appellate court, a bridal shop lost trademark protection when it licensed its trademark to several other entities but failed to supervise them. This was a family-owned company that may have lacked the resources to effectively monitor several licensees, which is a lesson that small business owners can learn. In general, if the trademark owner fails to exercise control over a licensee, or does not provide for supervision in the licensing agreement, a court will find that the trademark has been abandoned because it is a naked license.

In addition to receiving samples from a company to which you have licensed your trademark, you will want to get reports from the licensee on the types of products that are being sold with your trademark. You should know and approve the nature of the use of the trademark to ensure that it corresponds to the standards associated with it.

Since federally registered trademarks are presumed valid under the law, the burden of proving abandonment of a mark initially lies with the party filing the claim. Under Section 45 of the Lanham Act, it states that a mark will be deemed abandoned if it has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. If there is nonuse for three consecutive years, there is a presumption of abandonment, and a prima facie case is established.

In terms of a cancellation proceeding, once there is evidence of three years of nonuse, then the burden shifts to the trademark owner to show use during the three-year period or that despite the three years of nonuse, there was intent to resume use of the mark within a reasonably foreseeable time. It is much easier to prove abandonment if there has been three years of nonuse, so that the presumption attaches. If there isn’t three years of consecutive nonuse, then the burden remains with the party bringing the claim to show nonuse and lack of intent to resume use by a preponderance of evidence. This is a difficult burden for a party to meet.

The burden for proving a nonuse claim is similar to that of an abandonment claim. See United Global Media, Inc. v. Bonnie Tseng, 112 USPQ2d 1039 (TTAB 2014) [precedential], where the applicant filed a use based application for providing information about beauty, and an opposition was filed with the Trademark Trial and Appeal Board (“TTAB” or the “Board”). The Board held that the opposition was sustained for nonuse, and the application was void ab initio. 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.

An opposer or petitioner can present a case of nonuse 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. If the application was based on an intent-to-use use the mark with the goods or services, then use of the mark must have occurred before the filing of an allegation of use or statement of use. See our blog post, Proving Nonuse Of A Trademark Prior To The Application Filing.

How to avoid abandonment of a trademark
Don’t let that trademark certificate fool you. It might declare that you own trademark rights to a logo or name, but you can lose those rights just as easily as you acquired them.

A trademark registration certificate from the United States Patent and Trademark Office (USPTO) is really just a single step in the journey that is trademark ownership. Now that the USPTO has granted you trademark rights, you must do your part and protect those rights.

The USPTO does not police the market for unauthorized uses of your mark. Nor will it enforce your rights for you. The onus lies with the trademark owner to prevent others from infringing on their trademark rights.

Only businesses that actively monitor and protect their marks, searching out and prosecuting cases of infringement, will continue to benefit from trademark rights. Businesses that fail to protect their trademarks will see their rights be diluted and possibly canceled through litigation.

There are two primary ways businesses can put their trademarks at risk: through non-intentional acts of the owner, and through non-use of the mark.

Non-intentional acts of the owner

There are many different non-intentional acts that can precede the loss of trademark rights, but they all relate to the owner’s failure to protect the mark.

Uncontrolled licensing of a mark can lead to the loss of trademark rights. Sports leagues are shining examples of controlled licensing. Not only do they screen licensees, but they police the market for unauthorized use of their trademarks. If a rogue store sells merchandise bearing a team’s or the league’s trademarks without prior authorization, it will face a lawsuit. Sports leagues rarely let trademark infringement cases go without a fight.

Trademark owners must also look out for any other products or services using the same or similar marks. While the same or similar names can exist across different classes of goods and services — “DOVE” is a registered trademark for both a soap and a candy bar, produced by different companies — trademark owners still need to monitor such uses. Trademark infringement cases are based on the likelihood of confusion. That is, if consumers will likely confuse one for the other, there might be infringement.

Unsavory or unfavorable publication of a mark can tarnish it. Businesses can and should police for this type of usage and prevent it from spreading further. Frequent and varied use of distinctive marks in negative contexts runs directly counter to the positive aspects of trademark registration and should be actively monitored for preventative purposes.

Failure to police against these types of trademark misuse can dilute the mark’s meaning. Since trademarks are issued to create and preserve distinctiveness, anything that dilutes the meaning of a mark can precede its cancellation. Businesses cannot be satisfied with the certificate from the USPTO. Without protective measures, a mark can lose meaning and face cancellation.

On the other hand, thorough protection of branding and effective market permeation can actually lead to so-called “genericide”. The term refers to any mark that has gained such prevalence that it is used as a generic reference for all products in the same vein. Marks that have suffered from this kind of success include Aspirin and Cellophane, just to name a few. Once a term has reached sufficient generic usage, third parties can seek cancellation of a mark through this argument.

Non-use of a mark

While policing the unauthorized usage and reproduction of marks can go a long way towards preserving trademark rights, one’s own house deserves equal consideration. The trademark institution was designed based on usage of marks, not registration alone. Active use is therefore intrinsic to maintaining a trademark.

For this reason, trademark owners must prove continued use on a regular basis. Between the 5th and 6th year after registration, businesses must submit proof of continued use. They must then renew their trademarks every 10 years after the registration date. Non-use of a trademark for three consecutive years is considered abandonment unless somehow proven otherwise.

Maintaining relevant record of use is important, since failure to do so opens your mark to cancellation by litigation. Fortunately, attempts to prove non-use require compelling and conclusive evidence, since the matter involves complete forfeiture of respective trademark rights. However, without adequate attention to maintaining and recording usage with the USPTO, cancellation remains a possibility.(Harvard has more information on this here)

In any of these circumstances, simple actions can be taken to assure that trademark rights are maintained. Regular policing of usage and licensing can help protect reputation and prevent dilution. Keeping accurate and relevant records of usage can prevent third-party pursuit of cancellation. Through these simple, if sometimes arduous, measures, trademark rights and protections can be maintained to the benefit of brand reputation and revenue generation. Consulting with a trademark attorney can help ensure you avoid facing the potential of losing your trademark.

What does it mean to abandon a trademark?

One fundamental difference between trademarks and patents is that trademarks require ongoing and continuous usage in order to maintain exclusive rights. A renewal of a trademark registration, therefore, requires the owner to declare that the trademark has been and continues to be used on the goods and/or services identified in the registration. Acceptable evidence of current usage must also be provided to maintain a trademark registration. Trademark abandonment refers to the nonuse of a mark along with certain intentions of the trademark owner.

According to 15 USC 1127, 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. Trademark abandonment, therefore, requires two elements:

  1. nonuse; and
  2. intent not to resume use.

Patents, on the other hand, need not be used in order to survive. Utility patents simply require maintenance fees to be paid at certain time periods following the grant date while design patents require no maintenance fee payments. Keep in mind that patents have finite terms with definite expiration dates while trademark registrations can be renewed indefinitely as long as they are not abandoned.

What is a presumption of abandonment of a trademark?

Nonuse of a mark for three consecutive years creates a legal presumption that the mark has been abandoned. Legal presumptions relate to burdens of proof. So, if a presumption of abandonment has been established, the burden shifts to the trademark owner to show that the mark has been in use during the time period or that the owner has an intent to resume use.

For example, a trademark owner may try to provide evidence of special circumstances to show that nonuse of the mark was temporal, and that the owner has the intention to resume usage. An owner could also provide examples of limited use or other commercial efforts to show intent to resume use of the mark in the reasonably foreseeable future.

Can a cancellation claiming abandonment be filed against a registration over 5-years old?

Yes, trademark registrations older than five years may still be canceled on the basis of abandonment. Section 14 of the Lanham Act, 15 USC 1064, identifies grounds that may be used to cancel over 5-year old registrations, even against incontestable registrations.

What is a partial opposition or partial cancellation?

A trademark registration may list several goods or services, some of which may still be in use. In such circumstances, it may be prudent to apply a more surgical approach by seeking to remove only non-used goods or services from the registration. Such a removal of certain goods/services might make sense if they form the basis for a likelihood of confusion refusal.

A partial cancellation action filed under Section 18 of the Trademark Act [15 USC 1068] must plead that the proposed restriction or modification to the registration will avoid likelihood of confusion [15 TBMP 309.03(d)]. Unlike a cancellation action due to abandonment brought under Section 14, a petitioner seeking partial cancellation can show merely nonuse without having to prove an intent not to resume. [See Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS (TTAB 2012)].

What is abandonment of a trademark application?

So far, we have been discussing the abandonment of trademark rights due to an owner’s failure to use the mark with an intent not to resume. That is to 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, however, 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.

When does the clock start ticking for abandonment of US registrations based on foreign registrations under Section 44(e) or Section 66 (Madrid)?

Foreign companies may register trademarks in the US without having to show use in commerce. In such cases, the time period for counting the three-year presumption of abandonment begins on the registration date.

How to avoid abandonment of a trademark

The trademark registration process is not necessarily a complex one. At the same time, it is not an easy one. Many laws and requirements stand between you and a registered trademark.

The United States Patent and Trademark Office (USPTO) takes trademark laws very seriously. It may reject your application for something that to you seems negligible, like the wrong use of a single word.

Because of the potential hangups in the system, most people choose the smart approach of working with a trademark attorney. If, however, you decide that you would rather handle your own trademark application, you should guard against these seven common mistakes that often pop up when registering a trademark.

Table of Contents

1. Don’t make the trademark too similar

One of the most common reasons for trademark denials is that a mark appears “confusingly similar” to another registered mark. If the USPTO feels that consumers could confuse your mark for an existing one, they could reject your application.

Generally, when evaluating a mark for similarities, the USPTO considers not only the similarity of the mark to other marks, but also the similarity of the goods and services connected to the mark.

For instance, in the early 1970s, two major companies shared the Apple mark: Apple Computers and Apple Records. But because the companies offered different products and services, they were allowed to coexist with the same mark under a joint agreement.

2. Pick the right owner

Each trademark has a specific owner. Make sure that the application correctly states who owns the trademark rights.

In corporate trademark applications, most applicants list the company or corporate entity as the owner of the trademark rights. There is nothing wrong with this approach. As long as the company is legally formed and registered, everything should proceed smoothly. Otherwise, an attorney could legally argue that, at the time of the registration, the rights were issued to a non-existent party, making your claims groundless.

Make sure the date of your application is set after the company’s incorporation date. Alternatively, consider listing a different party as the owner.

3. Don’t ignore Office Actions

At some point during the registration process, the USPTO may return an application on some technicality. They may issue an Office Action, which is a letter explaining the problems or issues with your trademark application.

When this happens, be sure to reply as soon as you can. Applications left unattended for six months after issuance of an Office Action are subject to abandonment or cancellation.

Most people get discouraged by the legal jargon used in an Office Action. But the correct response is often easier than it seems. The solution might be simply changing a word in your description. If you’ve received an Office Action and you’re not sure how to proceed, consult with a trademark attorney.

4. Know when to file an “intent to use” application

You can file different types of applications depending on how and where you will use the mark. If you wish to file for a federal trademark, but you have not yet started providing your products or services in the marketplace, you can consider filing an “intent to use” application.

Filing this type of application protects your mark for a set period, giving you time to build the scope of your company in anticipation of a federal mark registration.

5. Accurately describe your goods or services

The trademark application contains a section where companies describe their goods or services. Before you submit your application, read your description to make sure that you have not accidentally entered the wrong information. You’ll risk getting the rights to your trademark revoked if it is discovered that your description contained false or inaccurate information.

To make the online application process easier, the USPTO offers a list of pre-approved descriptions for goods and services. Just be sure to choose the right fit for your company. If you are running a restaurant, don’t accidentally select “construction services.”

Sometimes, the pre-approved descriptions may not fit with your company, in which case you will need to write out the description on your own.

6. Avoid using the words “include” or “including”

When describing your company, or its products or services, avoid using vague or open-ended words like “including”. Your description should be as clear and descriptive as possible. Saying your business “offers XYZ services, including…” is almost a sure guarantee that your application will encounter an Office Action requiring an amendment to the description of goods and services.

Instead, be specific about what it is that your company does. A better description would read, “XYZ services, namely…” and then go on to list the specifics.

7. Avoid descriptive and generic terms

Trademarks are grouped into five major categories: fanciful, arbitrary, suggestive, descriptive, and generic. The last two (descriptive and generic) are poor choices for a trademark.

You’ll do best to avoid using common words, or words that merely describe the products or services your company offers. For example, a car wash named Super Clean Car Wash would find difficulty in the registration process. Choosing generic words increases the risk of your mark being challenged or rejected by the USPTO.

On the other hand, fanciful, arbitrary, and suggestive trademarks fly though the screening process a lot more easily. Words like Xerox, Microsoft, and Coca-Cola did not exist until their companies created them. If you’re going to choose a word already in existence, pick one that is not related to the services or products offered by your company, like Apple did for its computers.

The third option is to pick a word or phrase that does not directly describe the services of the company, but suggests the qualities that can be found. For instance, “Greyhound Bus” instantly suggests the idea of a speedy and efficient transportation system.

Using these tips, you can be better prepared when you file your trademark application. Avoid the easy mistakes, and contact a trademark attorney if you ever find yourself lost or confused.

Bring in a Professional

The simplest way to make sure the trademark registration process is handled without mistakes is to get the help of a professional trademark attorney.