What Is Trademark Abandonment?
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.
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