Trademarks are valuable assets that help businesses distinguish their products and services from others in the market. However, trademarks are not permanent and can be lost or abandoned if they are not used or maintained properly. In this blog, we will explain what trademark abandonment is, how it can happen, and what you can do to prevent it.
What is Trademark Abandonment?
Trademark abandonment occurs when the owner of the trademark deliberately ceases to use the trademark for three or more years, with no intention of using the trademark again in the future1. When a trademark is abandoned, the trademark owner may no longer claim rights to the trademark and may lose the ability to enforce it against infringers.
Trademark abandonment can also happen if the trademark owner fails to renew the registration of the trademark with the United States Patent and Trademark Office (USPTO) or if the trademark becomes generic or diluted due to excessive or improper use by others.
How Can Trademark Abandonment Happen?
There are many reasons why a trademark owner may abandon a trademark, such as:
Changing business strategies or priorities
Merging or acquiring another business
Discontinuing a product or service line
Failing to monitor or police the use of the trademark by others
Licensing the trademark to too many or unrelated parties
Neglecting to file required documents or fees with the USPTO
What Can You Do to Prevent Trademark Abandonment?
If you own a trademark and want to keep it alive and strong, here are some tips to avoid trademark abandonment:
Use your trademark consistently and correctly on your products, services, packaging, labels, advertising, website, social media, and other marketing materials. Make sure to use the appropriate symbols (® for registered trademarks and ™ for unregistered trademarks) and avoid modifying or altering your trademark without proper authorization.
Monitor your trademark usage and reputation in the market. Conduct regular searches on online platforms, databases, directories, and other sources to identify any potential infringers or unauthorized users of your trademark. If you find any, take prompt and appropriate action to stop them or negotiate a license agreement with them.
Renew your trademark registration with the USPTO before it expires. You will need to file a Section 8 Declaration of Use between the fifth and sixth year after registration, a Section 15 Declaration of Incontestability between the fifth and sixth year after registration (optional but recommended), a Section 8 Declaration of Use and a Section 9 Renewal Application every 10 years after registration. You will also need to pay the required fees for each filing.
Maintain accurate and updated records of your trademark ownership, usage, registration, licensing, enforcement, and other related matters. Keep copies of your certificates, receipts, invoices, contracts, correspondence, evidence of use, and other documents that show your continuous and proper use of your trademark.
What Can You Do If Your Trademark Is Abandoned?
If your own trademark has fallen into ‘dead’ or ‘abandoned’ status, you may be able to revive it by filing a petition with the USPTO. You must show that the abandonment was unintentional and that you have a valid reason for not using or maintaining your trademark2. You must also file the petition within 60 days of receiving a Notice of Abandonment from the USPTO3.
If your petition is granted, your application will be revived and continue the examination process where it left off. If your petition is denied or dismissed, you can request a reconsideration by presenting new facts that support your case2. However, if your request is also denied or if you miss the deadline for filing a petition, you will need to file a new application and start over.
If you want to use an abandoned trademark that belongs to someone else, you must first do a thorough research on why and when the trademark was abandoned. You must also check the registration status of the trademark on the USPTO website and in databases of all states where the trademark was used4. You must then start using the trademark for your products or services in order to acquire common law rights4. However, be aware that there may be some risks involved in using an abandoned trademark as you may face legal challenges from the original owner or other parties who may have prior rights.
Trademark abandonment is a serious issue that can result in losing your valuable trademark rights. To avoid this risk, you should use your trademark regularly and properly, monitor your trademark status and reputation, renew your trademark registration timely, and maintain adequate records of your trademark activities. By doing so, you can protect your trademark from being abandoned and enjoy its benefits for as long as possible
Have questions? Contact us to learn more about trademark renewals or how we can help you with your trademarks.