One of the greatest frustrations my clients and I have is trying to find the right trademark for them. It can be a difficult process. You want to promote your business with a memorable and catchy name that you can market. However, it often feels like other businesses have already taken the best names. Doing your homework is very important. But sometimes when you find a trademark registration for a confusingly similar name, there may be a path forward.
When Has a Trademark Been Abandoned?
As I’ve previously written, the way to get trademark rights is through use of the trademark in commerce. By using a trademark, you can obtain common law rights to that trademark. And trademark registration with the U.S. Patent & Trademark Office can expand those rights. However, the opposite is also true: you can lose trademark rights if you stop using the trademark in commerce. This is what the law refers to as “abandonment.”
If you are a trademark owner, it is important to know how your trademark can go abandoned. A trademark is considered legally abandoned if its use is discontinued with intent not to resume use. While this may seem like a very low bar, in practice it can be very difficult to prove that someone intends not to resume using a trademark. However, the law also says that if you stop using a trademark for a period of at least three consecutive years, then there is a legal presumption that you have abandoned that trademark. At that point, the burden shifts back to the trademark owner to prove that they have not abandoned their mark.
Why Might Someone Try to Cancel an Abandoned Trademark Registration?
The cancellation proceeding can be a useful tool when someone has registered a name. There may be various reasons why you believe a trademark registration and the underlying trademark rights are invalid. You might think that the registration owner lied or made a serious mistake during their trademark application process. Or you may just think that the owner is no longer using the name, meaning that it is potentially available for you to use and register. As discussed above, this is something that often comes up after conducting a federal trademark search. If you find something similar to your name that you believe is no longer being used, you might consider trying to cancel that registration.
How Do You Know Whether a Trademark Has Been Abandoned?
As stated above, there is a legal presumption that a trademark is abandoned if it has not been used in commerce for at least three years. If you suspect that is the case with a trademark that is registered, you might want to do some more research. There are several useful tools that routinely consult when I’m trying to figure out whether a trademark has been abandoned. The first is TSDR, which provides lots of useful information about the trademark and trademark registration. If you type in the registration number, TSDR gives you access to all the information listed with a registration, including all the documents that have been filed. For most registrations, you can look at the specimen submitted to show how the trademark was being used. Often that specimen will include a website and URL, photograph of the product, or something else useful to help track down the products/services online.
Most businesses today will have some kind of online presence. That may be a website, social media pages, or an Amazon product listing page, just to name a few. If you can find these things, it can tell you a lot about whether a trademark is still in use. Is someone updating the Facebook business page regularly? Is the Amazon product page listed as “out of stock”? If they have a website, have they let the domain lapse, and now it’s for sale? These things may give you insight as to whether the trademark is currently being used.
There are a couple other sites that you may want to check. The Internet Archive periodically takes screenshots of all sorts of websites around the web and saves them. Sometimes you can use it to get a rough timeline of when a website was active. Also, if a registration is owned by a business entity (e.g. corporation or LLC), check TSDR to see which state the entity is registered with. You can then search the business entity’s name on the Secretary of State website to see if that entity is still active or whether it has been dissolved. You can typically find where to search by doing a Google search for the state’s initials and “corporation search.”
Filing a Petition for Cancellation
If you have a potential conflict with a trademark that you believe has been abandoned, you may consider filing a trademark cancellation. These proceedings can be expensive if the trademark owner chooses to defend their registration. However, in many cases where they have abandoned the mark they may not defend the cancellation at all. If the owner does not file an answer to your Petition for Cancellation, a default judgment will be entered and the registration will be cancelled. In these situations, the proceeding is much quicker and less costly.
Thinking of Cancelling a Registration for an Abandoned Trademark?
If you believe that a trademark registration is subject to cancellation because of abandonment, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
