Most of my blog posts focus on how you can acquire trademark rights. In this post, I will be discussing the opposite: situations where trademark rights are lost. When someone loses trademark rights, it is called trademark abandonment. Since trademarks are very valuable business assets, companies want to avoid abandonment at all costs.
What Is Trademark Abandonment?
Trademark law is centered around the idea of use in commerce. In order to establish rights to a word, logo, or slogan, one must first provide products and/or services in connection with it. Generally, this is all that is necessary to establish common law rights to a trademark. However, with trademark law that old old saying is true: “if you don’t use it, you lose it.”
Trademark abandonment occurs when the owner of a trademark stops using it in commerce. There are several things to consider when trying to determine if the owner has lost their rights and whether the trademark has been abandoned.
When Is a Trademark Considered to Be Abandoned?
Determining whether a trademark has been abandoned is a very fact-specific question. While making such a determination can be difficult, there are some guidelines that can be helpful. First, if the trademark has not been used for at least three years, there is an assumption that it has been abandoned by the owner. However, there are circumstances where non-use for a three year period may not be trademark abandonment.
There are many situations where someone may discontinue use for an extended period of time without abandonment. For example, a restaurant may need to find a new location if its lease cannot be renewed. Alternatively, a person running a business as a sole proprietorship may discontinue use of a trademark if they have a health problem. Someone that sells a widget may discontinue sales if there are interruptions in the supply chain. These sorts of issues may explain a temporary lapse in use. They may also be relevant in defending against a cancellation where trademark abandonment is claimed by the plaintiff.
A period of non-use is not the only situation where abandonment can occur. Trademark abandonment also occurs when the owner discontinues use of the trademark with an intent not to resume use. This scenario is obviously harder to prove. If such an intent can be shown, the abandonment does not require a period of non-use like other abandonment claims.
Can I Use and/or Register an Abandoned Trademark?
In recent years, there has been a rush to revive old brands that were abandoned by their owners. One example is the man that wanted to bring back HYDROX, the popular brand of cookies. With famous abandoned brands, you already have a built-in audience and brand awareness. If you know a trademark has been abandoned, the owner has forfeited rights, meaning that you can theoretically bring the trademark “back from the dead.”
There are, of course, practical implications to trying to revive such a brand. First, while you may believe something has been abandoned, that does not necessarily mean the owner would agree. This can potentially lead to disputes and perhaps even costly trademark infringement litigation.
While you could reach out to the trademark owner to confirm that they have abandoned rights, that can also backfire. You would be putting yourself on their radar. You may get someone that is blunt about their intentions (or lack thereof) with the trademark. On the other hand, you could provoke a dispute that you would rather have avoided. As discussed above, abandonment can be a tricky issue.
Do You Have a Trademark Abandonment Issue?
Whether you are looking at reviving a dead brand or have a registration being targeted for cancellation, I would be happy to assist you with your trademark matter. 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.
