No Trademark Left Behind: Understanding Abandonment

Have you been keeping track of your trademark? While it may seem like a low-maintenance form of intellectual property, the rights to your trademark can expire if you don’t monitor its use. When you stop using your mark for three or more years without intending to use it again, it becomes an abandoned trademark under United States law. As the owner, in other words, you relinquish your rights to the trademark when you cease to use it.

When a trademark is abandoned, it doesn’t simply hang in a state of legal limbo; it is essentially free for other businesses to use. You have no legal recourse against a business that uses a legally abandoned mark. This applies to registered and unregistered trademarks. If the other business can show that your mark has not been used in three years, the courts will consider it prima facie evidence, or evidence that supports their case at face value. Since the burden of proof rests on the owner to prove otherwise, you will have to provide documentary evidence or credible testimony that supports either the use or the intent to continue using the trademark.

As the owner of a trademark, your intent to continue its use could be an important factor in determining its active or abandoned status. While abandonment is presumed after three years of disuse, it can also be backed with objective evidence of an intent to discontinue use of a mark. For instance, if your company issues a public statement announcing that the company name will be changed, that statement could be used as evidence for abandonment of a trademark. The same can apply if your mark changes in form or if the mark is used too sporadically. You could also lose the rights to your trademark if you misuse it, fail to police your mark against third parties who use a very similar mark, or allow it to become so ubiquitous that it devolves into a generic term rather than a signifier for a specific product and/or service.

Certain exceptions allow for excusable non-use of your trademark. US courts tend to be lenient when the trademark demonstrably cannot be used for reasons outside the owner’s control. Examples include labor strikes, a lack of demand for products and services associated with the mark, and laws that restrict the sale of goods represented by the mark. In these cases your trademark is not considered abandoned, and you can continue to protect it from businesses who might try to use it as their own.

No matter what you plan to do with your trademarks, remember that disuse, improper use, and lack of supervision can all result in abandonment. You wouldn’t want to lose a mark that could potentially have continued value for your company. If you’re uncertain about the status of your trademark, or you want to contest the unlawful use of your brand, feel free to call the attorneys at Integrated General Counsel. We’ll help you explore the available options.

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Written by Integrated General Counsel

Our focus includes handling a variety of corporate matters and also includes litigation in state and federal courts. Our current practice includes providing transactional services and representing a variety of small and medium-sized companies as their outsourced general counsel.