Editor’s Note: this article is the fourth installment in our series
of Sidebar articles focused on trademarks and brand protection. In our
Trademarks Part I article, Mr. John Shaffery addressed the important steps in choosing a
trademark as well as the benefits of attaining federal trademark registration. In our
Trademarks Part II article, Mr. Andrew Sevanian addressed the important steps in applying
for federal trademark registration, securing trademark rights and maintaining
trademark protection. In our
Trademarks Part III article, Ms. M. Lisa Odom and Mr. Sevanian addressed matters of trademark
“policing” and enforcement against third parties.
In our trademark practice, we often experience situations in which individuals
and/or entities have a registered trademark or service mark, but have
either failed to observe renewal formalities with the United States Patent
& Trademark Office (“USPTO”) or simply failed to continue
“using” their mark over a certain period of time.
While this might seem like a relatively benign bit of oversight, it can
have drastic consequences on the preservation of one’s trademark
protection, including the
abandonment of the trademark and thereby the loss of such intellectual property rights.
What this usually means is that someone put in valuable time, energy and
money to obtain that coveted circle “R” symbol (®) only
to see it all wither away based on, more often than not, avoidable actions
However, even if a trademark owner stops “using” their mark,
not all is necessarily lost. With some prudent trademark management practices,
the savvy brand owner should be able to maintain the benefits bestowed
on a federally registered trademark and avoid, or at least mitigate, the
risk of such rights becoming abandoned.
Trademark “Abandonment” – Use It or Lose It?
As a primer, trademark rights arise based on one’s “use”
of a mark “in commerce.”
See 15 U.S. Code § 1127. Once they have selected (and started to use)
a mark, trademark owners might then consider applying for federal trademark
registration in order to bolster such trademark rights. On this note,
please refer to our
Trademarks Part I article for some of the benefits of federal trademark registration.
To this end, once a mark is registered with the USPTO, the trademark owner
should take all necessary steps to maintain such registration by following
the renewal requirements of the USPTO. On a related note, our
Trademarks Part II article addresses some of these steps.
That said, even a registered trademark that follows renewal formalities
with the USPTO can still become invalidated based on “abandonment”
(i.e., non-use of the mark).
The federal Lanham (Trademark) Act also addresses how a trademark might
become “abandoned” when: “its use has been discontinued with
intent not to resume such use. Intent not to resume may be inferred from circumstances… [and]
nonuse for 3 consecutive years shall be
prima facie evidence of abandonment...” 15 U.S.C. §1127 (emphases added).
NOTE: while the Trademark Act also addresses the abandonment of a mark
when such mark becomes “generic,” the focus of this article
will be abandonment based on non-use. We will soon present a separate
article on the topic of trademark “genericization.”
As such, the central issues of whether or not a valid and registered trademark
has become abandoned due to
non-use are if: (1) the mark is discontinued or no longer in use; and (2) the
trademark owner does not have an intent to resume such use. Failure to
use alone is not necessarily enough to prove abandonment, as there must be an
intent to abandon (i.e. an
intent not to resume use). Here is where things get a little bit tricky. How
does one counter the allegation that they had an “intent”
not to resume such use of their mark? This sounds like a fairly subjective
standard that might be difficult to prove, as it seemingly turns on one’s mindset.
Fortunately, common practice, statutory provisions and relevant case law
provide some guidance on how to interpret these provisions of the Trademark Act.
First, in order to mitigate the presumption of abandonment one must understand
that this presumption is based on non-use of a mark for
years. This means that there can be intervals of nonuse of a trademark, so long
as they do not meet or exceed three consecutive years, in which the mark
might not be presumed to be abandoned.
Second, even if such nonuse occurs, the presumption of abandonment is a
Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 1391 (Fed. Cir. 2010);
Silverman v. CBS, 870 F.2d 40, 45) (2d Cir. 1989). In other words, even if a mark owner
has not used a mark for three consecutive years, that owner may rebut
the presumption of abandonment with evidence of a continuing
intent to use; or at the very least showing there is an “intent… to
resume use within the reasonably foreseeable future[.]”
See Silverman v. CBS, 870 F.2d at 46 (emphases added). Under certain circumstances, even active
discussions about further use of a mark, without actual use, might be
sufficient to negate the intent to abandon a mark.
Zelinski v. Columbia
300 Inc., 335 F.3d 633 (7th Cir. 2003).
There is no definitive timeline in terms of what is a “reasonable”
timeframe to resume use. Some cases have shown non-use for as long as
seven (7) years does not necessarily mean abandonment of a trademark so
long as there are
reasonable grounds to rebut a presumption of non-use/abandonment.See
Silverman v. CBS, 860 F.2d at 47 (citing
Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir.1980) (“In
Saratoga Vichy Spring Co. v. Lehman… we rejected a claim of abandonment based on seven years of non-use where
the initial decision to cease use resulted from a decision of the state
legislature and the state, which was the trademark owner, continuously
sought to sell the mark along with the mineral water business to which
That being said,
plans to resume use of a trademark cannot be indefinite and/or vague, as
there needs to be some sort of a specific plan to resume use such as active discussions to resume use, market research and other factors.
Silverman v. CBS, 870 F.2d at 46-49 (2d Cir. 1989) (CBS discontinued use of Amos and Andy
because the TV show was controversial and CBS’ plan to possibly
reinitiate use someday if social attitudes changed was too vague and contingent
of an intent to avoid abandonment);
see also Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993) (Los Angeles Dodgers had abandoned rights to the Brooklyn Dodgers trademark
after the pro baseball team moved from Brooklyn to Los Angeles).
That said, if use of a mark will (or must) cease for a certain period of
time, best practices would be to
demonstrate reasonable grounds for suspending use and plans to resume use
in the reasonably foreseeable future (i.e., when the grounds for suspending
See, e.g., Star–Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393 (9th Cir.1985);
Chandon Champagne Corp. v. San Marino Wine Corp., 335 F.2d 531, 535 (2d Cir.1964).
In other words, there should be legitimate, nontrivial grounds to suspend
use coupled with legitimate, nontrivial plans to resume use. However, be
warned – if the reasons for suspending use of a mark cease to exist, and
one fails to resume use with a reasonable timeframe thereafter, they risk
losing their mark through abandonment because they would no longer have
reasonable grounds to explain their nonuse.
Based on the foregoing, even if the use of a trademark has been halted
for a certain period of time, not all is necessarily lost. With some prudent
internal policies, and careful external practices, one can take steps
to mitigate the risk that their mark is considered abandoned if/when they
find themselves in the position of having to temporarily suspend use of
their mark. Some simple steps to consider are as follows:
- If possible, try to not let three or more years go by in which the mark
is not used;
- If use of the mark ceases, establish (and record) your intent to resume use by:
- Documenting the reasonable grounds for suspending use (e.g., market factors,
increased costs, governmental actions, changes in laws, etc.); and
- Create a plan of action for resuming use in the reasonably foreseeable
future (e.g., conduct research, perform internal investigations, configure
the product/service and resume such use once such factors abate or as
soon as practical thereafter).
A valid and registered trademark brings with it a panoply of intellectual
property protections. In today’s ultra-competitive environment,
establishing (and maintaining) one’s brand identity is paramount.
Whether utilizing in-house talent and/or hiring seasoned outside counsel,
the astute business owner can start to take proactive measures in order
to stay ahead of the game by preserving their valuable trademark rights
where others might see such rights become lost due to abandonment.
Legal advice is the application of law to an individual’s specific
circumstances. Poole Shaffery & Koegle, LLP has prepared this article for
general information purposes only. This handout is not legal advice, and
is not to be acted on as such. Poole Shaffery & Koegle, LLP disclaims any
intent to provide legal advice to, or to form an attorney-client relationship
with, any person using this handout. Please consult a lawyer for information
and advice that is particular to your situation.