Trademark Abandonment

Trademark abandonment occurs when trademark use is discontinued with no intent to resume use.

 

When a trademark is deemed abandoned, the owner of the trademark has no more rights to the trademark under the law and anyone else can then adopt the trademark or something confusingly similar without fear of being sued by the former owner. The purpose of not allowing trademark owners continued rights to abandoned trademarks is that it is not practical to give monopolies to words or phrases in perpetuity because it would unduly and harshly limit what future companies can use as trademarks.

 The relevant section of the Lanham Act regarding trademark abandonment

 

Under the Lanham Act, the statute governing trademark law, a trademark that is discontinued with no intent to begin use again will be considered an abandoned trademark. Additionally, nonuse for three consecutive years is prima facie evidence that the trademark is abandoned. What the statute means regarding an “intent not to resume” use of the trademark in the future is often the central issue in trademark cases regarding abandonment. As the Second Circuit once pointed out “a company could almost always assert truthfully that at some point, should conditions change, it would resume use of its trademark.” Factors that the courts consider regarding intent not to use the trademark is how long has the trademark not been used, are there current business or marketing plans to resume use, the continued goodwill of a trademark with relevant consumers, and how well known the trademark was before nonuse began.

 

Trademark owners worried about abandonment of a trademark may try to use it for the sole purpose of avoiding abandonment. There is nothing wrong about this practice and for trademark owners who want to maintain their rights, they should absolutely use the trademark periodically. They should especially avoid going three years without using the trademark because they will have to rebut the prima facie evidence that the trademark is abandoned. However, trademark owners cannot use the trademark in a way that is not “made in the ordinary course of trade...” In other words, the trademark must be used in a consumer facing way and not just in internal emails or memos. Additionally, if the trademark owner, for example, uses it on one flyer outside their shop, the court will likely view that as the trademark owner merely trying to reserve its trademark rights and will still find the mark abandoned.

 

If you have any questions about trademark abandonment or how to keep your trademark from going abandoned, feel free to leave a comment below or contact us and we will do our best to help you out.

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