Key Takeaways

  • An abandoned trademark typically results from nonuse, improper use, registration lapse, or explicit withdrawal.
  • Trademarks not used in commerce for three consecutive years are presumed abandoned unless excusable nonuse is shown.
  • Genericide, lack of quality control in licensing, and failure to enforce rights can all lead to trademark abandonment.
  • Once abandoned, trademarks can be claimed by others—but not always without risk.
  • A previously abandoned trademark may be revived under certain legal conditions, such as proving intent to resume use.
  • Express abandonment during disputes may occur voluntarily or as a result of opposition proceedings.

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

Can You Reuse an Abandoned Trademark?

Reusing an abandoned trademark may be possible but should be approached with caution:

  • Confirm Abandonment
    Check the USPTO TESS and TSDR databases to verify that the trademark is officially dead and that no renewal documents have been filed.
  • Check for Common Law Rights
    Even if federal registration has lapsed, the original owner might still retain common law rights based on use in a specific geographic area.
  • Consider Filing a New Application
    If the mark is abandoned and no other party has established rights, you can apply for a new trademark registration. Be prepared to demonstrate actual use or a bona fide intent to use the mark in commerce.
  • Avoid Likelihood of Confusion
    Ensure your use of the trademark is not likely to confuse consumers if a similar mark still exists for related goods or services.

What Happens to an Abandoned Trademark?

Once a trademark is deemed abandoned, it becomes vulnerable to use by others in the marketplace. However, just because a trademark is listed as "dead" in the USPTO database doesn’t mean it's automatically free for anyone to use. Here’s what to consider:

  • Potential Legal Risks: A trademark that appears abandoned could still have lingering common law rights if the original owner used it in commerce and can prove continued intent to use.
  • Due Diligence: Before adopting an abandoned trademark, businesses should conduct a thorough trademark search to assess potential conflicts or residual goodwill that may cause consumer confusion.
  • Risk of Litigation: Even if the USPTO status shows abandonment, the original owner might still challenge new usage, particularly if abandonment cannot be definitively proven or if there has been use in a local market.
  • New Application: If the mark is truly abandoned, a third party may file a new application to register it. However, the application must be for a new and legitimate use in commerce to be accepted.

How to Avoid Trademark Abandonment

To preserve your trademark rights and prevent abandonment:

  1. Use the Trademark Regularly
    Ensure the mark is consistently used in commerce in connection with the goods or services it covers.
  2. Monitor Usage
    Keep detailed records of your trademark’s use in marketing materials, product packaging, websites, and promotional campaigns.
  3. File Required Maintenance Documents
    • File a Section 8 Declaration between the 5th and 6th year after registration.
    • File a Section 9 Renewal Application every 10 years.
  4. Enforce Your Rights
    Promptly address any unauthorized use through cease and desist letters, TTAB proceedings, or infringement lawsuits to avoid claims of abandonment due to non-enforcement.
  5. Manage Licensing Agreements Carefully
    Maintain control over the quality of goods/services produced under your mark by third parties to prevent abandonment through “naked licensing.”

Frequently Asked Questions

  1. Can you claim an abandoned trademark for your own business?
    Yes, but only if the original owner has truly ceased use and shows no intent to resume. It’s best to conduct a full trademark search and seek legal counsel before proceeding.
  2. How do I know if a trademark is truly abandoned?
    Check the USPTO’s TSDR system for registration status and look for signs of nonuse for three or more years. Also verify that no opposition or litigation is ongoing.
  3. What is the difference between a dead trademark and an abandoned trademark?
    A dead trademark refers to a mark whose federal registration has lapsed or been canceled. Abandonment implies that the owner has stopped using the mark and lacks intent to resume, possibly resulting in a dead mark.
  4. Can a trademark be abandoned if it becomes generic?
    Yes. When a brand name becomes the common name for a type of product (e.g., "escalator"), it may lose its distinctiveness and become generic, leading to abandonment through genericide.
  5. What’s the safest way to adopt an abandoned trademark?
    Consult with a trademark attorney to perform clearance searches, analyze risks of common law rights, and file a new registration application if appropriate.

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