Abandonment of Trademarks

An abandoned trademark refers to a mark its owner has stopped using with no intent to resume its use in the foreseeable future. Trademark rights are built on continuous use, and when a mark isn’t used for a prolonged period (typically three years or more) without a valid reason, it may be considered abandoned.

When Is Nonuse Excusable?

Nonuse of a trademark can be excusable under certain circumstances. For instance, if an external reason or unforeseen challenge (like a natural disaster) temporarily prevents the use of the trademark, it can be excused. However, the owner must demonstrate a genuine intent to resume the mark’s use once the situation allows.

Here’s how you might demonstrate this genuine intent:

• Documentation of Plans: Keeping thorough records of internal plans to reintroduce the trademarked product or service can serve as evidence. This might include business plans, marketing strategies, or timelines.
• Investment Evidence: Show that funds have been allocated for the future use of the trademark. This can be in the form of advertisements booked for future dates, contracts with suppliers or manufacturers, or investments in research and development related to the product or service associated with the mark.
• External Communications: Correspondence with partners, suppliers, or customers indicating plans to resume using the trademark can strongly indicate intent.
• Preliminary Marketing or Promotions: Even if the product or service isn’t ready to relaunch, early-stage marketing activities or promotions can demonstrate an intent to use the mark shortly.
• Registration Renewals: Continuously renewing the trademark registration and paying associated fees, even during periods of nonuse, can indicate a genuine intent to use the mark again.
• Valid Reasons for Temporary Nonuse: Clearly document any extenuating circumstances that led to the nonuse of the trademark, whether they are legal disputes, supply chain issues, natural disasters, or other unforeseen challenges. Make sure to include any efforts taken to address these challenges.
• Evidence of Past Use: Demonstrating a history of continuous use before the period of nonuse can sometimes support the intent to resume, especially if the reasons for the hiatus are logical and temporary.

In all situations, the more tangible and concrete the evidence, the better. Mere statements or aspirations without actual steps or plans taken towards resumption of use will likely be deemed insufficient by the courts or the United States Patent and Trademark Office.

Must Abandonment Be Nationwide?

Trademark abandonment doesn’t necessarily have to be nationwide. If a trademark is abandoned in certain regions or markets but remains active in others, the rights may only be lost in the areas where it’s abandoned. This can create a complex scenario where multiple parties might have rights to the same mark in different areas.

Here’s a walk-through of such a scenario:

Regional Use Without National Registration

Let’s begin with a hypothetical. Imagine two businesses, Company A and Company B. Company A started using a trademark in the northeastern part of the U.S. in 2010 but never registered it federally. Meanwhile, Company B started using the same trademark in the southwestern U.S. in 2012 and registered it federally in 2013.

Priority Rights

Even though Company B has a federal registration, Company A has “common law” rights to the trademark in the northeastern region because of its earlier use there. This means that in the northeastern region, Company A has priority, but elsewhere in the U.S., Company B, with its federal registration, has rights.

Expanding Business Operations

If Company A decides to expand its operations nationally after Company B’s federal registration, it might face limitations. It can continue using the mark in the northeast, but Company A may face legal challenges in other regions, especially where Company B operates or has significant recognition.

Confusion and Legal Disputes

Potential confusion can arise if consumers in a new market are already familiar with Company B’s goods or services under the mark but then encounter Company A’s use of the same mark.

This is especially problematic if the businesses operate in similar industries. Company B might then bring legal action against Company A for trademark infringement despite Company A’s older, albeit regional, rights.

Possible Resolutions

In such situations, there are a few potential outcomes:

• Negotiation & Coexistence: The companies might negotiate a coexistence agreement where both parties agree to specific terms on how and where each can use the mark to avoid consumer confusion.
• Buyout: One company might offer to buy out the other’s rights to the mark.
• Litigation: If a mutual agreement can’t be reached, the parties might end up in litigation where a court will decide which party has the rights to the trademark in which regions.

The Role of Abandonment

If either Company A or B stops using the mark for a prolonged period without a legitimate excuse and shows no genuine intent to resume its use, the mark might be considered abandoned in that region. The other company could then potentially expand its use into that region without facing infringement claims.

What Might Cause the Trademark to Lose Its Significance?

A trademark can lose its significance if it becomes a generic term in the public’s eyes. For instance, if a brand name becomes the general term for a product or service (like “escalator” or “thermos”), it can lose its trademark protection. Additionally, a lack of enforcement against infringing parties can dilute a mark’s significance.

How Can I Oppose the Registration of a Trademark Similar to Mine?

If someone attempts to register a trademark of yours, you can oppose it. This is often done through the United States Patent and Trademark Office’s Trademark Trial and Appeal Board. The opposition process involves filing a notice of opposition, presenting evidence, and possibly engaging in hearings.

Here’s a brief overview of each step in the opposition process through the United States Patent and Trademark Office’s Trademark Trial and Appeal Board:

Filing a Notice of Opposition

After the USPTO approves a trademark application but before it’s officially registered, it’s published in the “Official Gazette” for a 30-day opposition period. Any party who believes the mark’s registration may harm them can initiate the opposition process by filing a Notice of Opposition. This document outlines why the opposing party believes the trademark shouldn’t be registered.

Presenting Evidence

Both sides have an opportunity to present evidence supporting their respective positions. This can include witness testimonies, documentation proving prior use of a mark, or evidence showing potential consumer confusion. The evidence phase is critical, as the strength of the evidence presented can significantly influence the outcome.

Participating in Hearings

Hearings before the Trademark Trial and Appeal Board resemble traditional legal proceedings but are generally less formal. Here, both parties can argue, cross-examine witnesses, and further present their case. However, unlike traditional court proceedings, these are typically held via telephone or video conference.

After all these steps, the Trademark Trial and Appeal Board will decide based on the evidence and arguments presented. Depending on the outcome, the contested trademark will either proceed to registration or be refused.

What Will Happen If I Lose?

If you oppose another party’s trademark registration and lose, the opposing party’s mark will likely proceed to registration. This can limit your ability to expand or enforce your trademark rights. If the decision seems incorrect or new evidence emerges, you might consider a de novo review in a federal court, which is a fresh review of the case.

Can an Abandoned Trademark Be Revived?

In certain situations, an abandoned trademark can be revived. If the abandonment was unintentional and the owner can present a valid reason for the nonuse, they might be able to petition for the revival of the mark. However, complications can arise if another party has begun using the mark in the interim.

Should I Consult a Lawyer about My Trademark Issue?

Yes. The intricate web of trademark registration, enforcement, and protection can be challenging. Consulting a trademark lawyer through LegalMatch can clarify and protect your intellectual property rights. Remember, using LegalMatch to find the right attorney is confidential, and presenting your case is free.