How to avoid abandonment of a trademark

What does it mean to abandon a trademark?

One fundamental difference between trademarks and patents is that trademarks require ongoing and continuous usage in order to maintain exclusive rights. A renewal of a trademark registration, therefore, requires the owner to declare that the trademark has been and continues to be used on the goods and/or services identified in the registration. Acceptable evidence of current usage must also be provided to maintain a trademark registration. Trademark abandonment refers to the nonuse of a mark along with certain intentions of the trademark owner.

According to 15 USC 1127, a trademark is considered abandoned if “its use has been discontinued with intent not to resume such use.” The intent not to resume may be inferred from circumstances. Trademark abandonment, therefore, requires two elements:

nonuse; and
intent not to resume use.

Patents, on the other hand, need not be used in order to survive. Utility patents simply require maintenance fees to be paid at certain time periods following the grant date while design patents require no maintenance fee payments. Keep in mind that patents have finite terms with definite expiration dates while trademark registrations can be renewed indefinitely as long as they are not abandoned.

What is a presumption of abandonment of a trademark?

Nonuse of a mark for three consecutive years creates a legal presumption that the mark has been abandoned. Legal presumptions relate to burdens of proof. So, if a presumption of abandonment has been established, the burden shifts to the trademark owner to show that the mark has been in use during the time period or that the owner has an intent to resume use.

For example, a trademark owner may try to provide evidence of special circumstances to show that nonuse of the mark was temporal, and that the owner has the intention to resume usage. An owner could also provide examples of limited use or other commercial efforts to show intent to resume use of the mark in the reasonably foreseeable future.

What is a partial opposition or partial cancellation?

A petition to cancel a registration on the grounds of abandonment is brought under Section 14 of the Lanham Act [15 USC 1064]. As discussed above, a challenger seeking to prove abandonment must show both nonuse and intent not to resume.

In certain circumstances, it may be prudent to apply a more surgical approach to modify or remove from a cited registration only specific goods or services that are blocking an applicant from registering a mark. Such obstacles might be removed with a partial cancellation under Section 18 of the Trademark Act [15 USC 1068].

A partial cancellation action filed with the TTAB must plead that the proposed restriction or modification to the registration will avoid likelihood of confusion [15 TBMP 309.03(d)]. Unlike a cancellation action due to abandonment brought under Section 14, a petitioner seeking partial cancellation can show merely nonuse without having to prove an intent not to resume. [See Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS (TTAB 2012)].

What is abandonment of a trademark application?

So far, we have been discussing the abandonment of trademark rights due to an owner’s failure to use the mark with an intent not to resume. That is to be distinguished from abandonment of a trademark application which results from the failure of an applicant to respond timely to certain deadlines. For example, failure to respond to an Office Action or to file a Statement of Use can result in abandonment of an application.

Abandoning a trademark application, however, does not necessarily mean that an owner has abandoned trademark rights. It is possible for an owner to continue using a trademark even if its application was abandoned.

When does clock start ticking for abandonment of US registrations based on foreign registrations under Section 44(e) or 66?

Foreign companies may register trademarks in the US without having to show use in commerce. In such cases, the time period for counting the three-year presumption of abandonment begins on the registration date.

COVID-19 Global Trademark Opposition, Cancellation, and Invalidation Updates

Trademark cancellation due to abandonment is the subject of a recent decision by the Trademark Trial and Appeal Board.

In Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., the Petitioner sought to cancel four registrations of the Respondent. The grounds for cancellation were fraud and abandonment. Petitioner also sought to cancel two of the registrations on additional grounds of non-use. All of the registrations were for the mark GIDGET for goods and services in multiple classes. The entire list of goods and services of the collective registrations numbered in excess of one hundred distinct items.

Under Section 45 of the Trademark Act, a mark is abandoned if the following occurs:

When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

Since federal trademark registrations are presumed valid, the party seeking cancellation bears the burden of proving a prima facie case of abandonment. If this preliminary burden is met, it then shifts to the trademark registrant to rebut the showing with evidence. Proof of non-use of at least three consecutive years establishes a prima facie case of abandonment.

In response to Petitioner’s discovery requests, Respondent stated that it had used the GIDGET Mark continuously from 2005 through 2012. Yet it could not produce any verifiable evidence of sales. It also indicated that it did not realize that it had to have continuous use on all of its goods and services listed in the registrations. Instead, it thought that the law required it to only have use on at least one of the goods. It also indicated that it was making ongoing licensing efforts to license the mark. However the testimony of officers of Respondent’s predecessors in interest and third parties had shown that from at least 2008 through 2012, there was no use of the GIDGET mark. This was enough for Petitioner to establish a prima facie case of abandonment, with the burden of showing an intention to resume use of the mark shifting to Respondent.

To support that it had an intent to resume use of the GIDGET Mark, the Respondent was required to build a record with respect to the activities it engaged in during the non-use period or what outside events occurred to support an intent to resume use. In short, evidence of an intent to resume use must be more than a subjective intention; rather, there must be verifiable objective facts. Moreover, the intention to resume use must be “within the reasonably foreseeable future.” Here, the Respondent could not produce any evidence of sales, advertising, negotiating of license agreements, other efforts to market goods and services associated with the GIDGET Mark. Instead, the Board noted that Respondent’s evidence added up to little more than attempts to secure additional investors. In totality, the Board concluded that Respondent’s activities did not constitute use or an intent to resume use, but rather merely an intent to reserve rights in the mark. Accordingly, it ordered the trademark cancellation of the GIDGET Mark in the involved registrations due to abandonment.

Practice note: This case presents a lesson for trademark owners to carefully monitor whether they are using their trademarks on all of the goods and services contained in their registrations. If not, it is recommended that a consultation with a qualified trademark attorney occur. A trademark cancellation can have serious implications to brand marketing and sales efforts. To obtain further information on trademark cancellation legal strategies, contact James Hastings.

A trademark identifies the source of goods and distinguishes your goods from the goods of competitors. Trademarks protect intellectual property rights during interstate commerce, while trademark laws prevent consumer confusion. 3 min read

An abandoned trademark is a registered trademark that either wasn’t used or was used improperly, like in cases of trademark dilution, registration expiration, excessive licensing, non-enforcement of exclusive rights to a trademark, and trademark abandonment (three years of disuse).

The agency that registers trademarks is the United States Patent and Trademark Office (USPTO). The marks can be registered on anything directly related to company’s products and services, such as business names, slogans, words, phrases, images, shapes, colors, scents, sounds, logos, and symbols.

Trademark Rights

Commercial use of a trademark establishes your trademark rights in the U.S. Though not required, registration with the USPTO provides you with exclusive rights for the trademark usage and the ability to take to court anyone infringing on your rights. You must actively protect your trademark by spotting and dissuading any infringement attempts.

What Is a Dead Trademark?

After registration, the law requires you to actively use the trademark by affixing it to your business’s goods, displays, labels, containers, and documents. After the registration, the trademark must be maintained by filing a declaration of continued use. A trademark registration becomes dead when the application wasn’t completed or maintained. Once you stop using the trademark, your trademark rights become abandoned, creating an opportunity for someone else to acquire the rights.

A dead trademark is not always available for use or registration by someone else because the original registrant might still be using it, and thus retain common law trademark rights. Search the USPTO website to learn why the trademark was abandoned. You might be able to acquire the trademark depending on the circumstances of its abandonment.

How to Use an Abandoned Trademark

Before using an abandoned trademark, speak to a trademark and branding attorney and find out why the application was abandoned. Search common-law uses of the mark, state corporate names and trademark registrations as well as domain names.

You must clear the rights before using the mark to avoid infringing on someone else’s intellectual property, which could cost you time, money, and reputation.

Find out when and why the trademark was abandoned.
Check the registration status of the trademark on the USPTO website and in databases of all states where the trademark was used.
Start using the trademark for your products or services to acquire trademark rights.

For greater protection of your exclusive rights and to prevent the previous owner from using the trademark again, consider registering the trademark with the USPTO and with the states where you conduct business.

Trademark Abandonment Causes

Three consecutive years of nonuse makes the trademark abandoned and opens it for possible use by third parties. Sometimes, you can reacquire your trademark rights if you prove your intention to use it again.

For nonuse rebuttal, show evidence of your intention, such as advertising featuring the trademark or distributing the trademarked goods. For excusable nonuse, show proof of circumstances that you had no control over, such as seeking approval from a regulatory agency for goods manufacturing.

Other causes of trademark abandonment are:

Trademark assignment: when the owner assigns the rights to another party but fails to maintain control over their proper use.
Genericism: when a trademark becomes too widely used.
Excessive licensing: when a trademark owner licenses the rights but is unable to maintain control over the trademark.
Failure to enforce: when the owner takes no active measures to prevent unauthorized use of the trademark by third parties.

Initially, you can register a trademark for 10 years. At the five-year mark, you must file a Section 8 affidavit to retain the rights. After 10 years, file a Section 9 affidavit for the trademark renewal.

Considerations Before Purchasing a Dead Trademark

If the mark has been abandoned for three to five years, most likely you’re safe. But beware that a non-active mark in the USPTO database could still be in use by the original owner. Even if you prove that the original owner has no intention of using it again, you still risk legal problems.
It is best to get permission from the original owner before using the trademark. Make sure to also check all countries where the mark was used.
Evaluate the worth of using this specific mark rather than the alternative one and whether you are ready to face possible legal issues.

If you need more information about an abandoned trademark, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

How to Trademark an Abandoned Trademark

Sometimes, a company goes out of business or changes its trademark. Once a trademark goes out of use, the owner relinquishes the rights to it. If the original owner no longer claims rights to the mark, it’s available for use by a different individual or business.

How to Avoid Abandonment of a Trademark

Think carefully before picking up a trademark previously used in commerce. Some marks have obtained broad public recognition. A revival of a mark by a different user can create difficulties. If you have considered this and still have interest in acquiring rights in an abandoned trademark, it is possible to adopt it for your own business.

1. Visit the U.S. Patent and Trademark Office (USPTO) database online.

Use the Trademark Electronic Search System to research the status of the trademark’s registration. The database helpfully offers information on whether a trademark registration or an application is live or dead.

Use caution. Not every trademark listed as dead in the USPTO database is available for your use or registration. Some registrants neglect their federal registration yet continue to use the mark itself. In such cases, the prior user still has a right in the trademark under the common law.

Check for similar as well as identical marks. Always keep in mind that the point of laws on trademark is to prevent the confusion of consumers in a marketplace.

2. Find out when and why the trademark fell out of use.

If you can confirm that the earlier holder of the mark has no intent to use it in the future, under federal law, abandonment has occurred, and the mark is available.

Otherwise, if the mark has fallen out of use for three years or longer, and if you have completed the rest of the steps listed here, you may consider the trademark you desire abandoned and available.

3. Find out if the trademark is active in a state database.

A state registration protects the rights of a registrant in a trademark within the state’s territory. You may not obtain rights in a mark registered in a state unless registration has lapsed or abandonment has occurred. The trademark registration comes from a state office, usually the Secretary of State. Check the database of the state in which the prior user did business.

4. Use the trademark.

When you adopt an available mark as your trademark, you acquire the right under the common law to keep other actors from using a similar mark in a fashion that would confuse consumers.

5. Register the trademark.

Registration helps you enforce your legal right to the exclusive use of the mark. Pursuant to the Lanham Act, federal registration of your mark confers rights throughout the United States, as well as its territories and possessions. If you choose to register your mark with the state only, you will acquire trademark rights only within that state.

6. Maintain your rights.

As a registrant, you must maintain rights in your mark by filing a declaration of continued use to keep your own registration alive. Before adopting a previously used trademark for use in your own business, make sure it’s available. If it truly is abandoned and it makes sense for you to use it, adopt the mark, register it, and maintain your legal rights to it.

Before choosing to register a mark for trademark protection, find out if it was previously used/registered with the USPTO. If you have learned that the trademark was in fact abandoned, first consider any potential legal implications of continuing to register the mark as your own. Once you’ve done that, and you’re ready to move forward, follow these steps to ensure proper registration and protection of your mark.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.

Trademark use in interstate commerce is required to create a basis upon which a federal trademark registration may issue. This requirement naturally raises two questions. First, what use qualifies as trademark use? Second, how much trademark use in interstate commerce is enough?

With respect to the first question, the use of the trademark must be a bona fide use in the ordinary course of trade rather than made merely to reserve a right in the mark. Whether the use was bona fide will depend on the industry. For example, testing or selling samples in one industry such as the software industry is sufficient to satisfy the bona fide use requirement because it is ordinary to engage in beta testing before launching into full commercial-scale production. But selling samples of a t-shirt is not ordinary for the clothing industry before launching into full commercial-scale production. In the case of selling samples in the clothing context, you are much more likely to not satisfy the bona fide trademark use requirement.

Assuming the use qualifies as trademark use, then the focus turns to how much trademark use in interstate commerce is enough. In other words, was the trademark use merely token use. Recently, the Trademark Trial and Appeal Board had the opportunity to address this issue in the Mombacho Cigars S.A. v. Tropical Tobacco, Inc. case.

Mombacho Cigars petitioned to cancel Tropical Tobacco’s registration for the MOMBACHO mark in connection with “cigars.” Mombacho Cigars that Tropical Tobacco had made nominal use of the MOMBACHO mark for five years – two years longer than the presumptive abandonment period of three years. Tropical Tobacco admitted that it did not market the MOMBACHO brand, but maintained that it continuously sold the cigar from its date of first use to the present even though sales dwindled between 2010 to 2015. In 2012 to 2014, Tropical Tobacco sold between two to four boxes of cigars to one distributor. But in 2015, the sales increased to 24 boxes and then a 300 box order all by the same distributor.

The Board found that while low, this pattern of sale activity was sufficient to establish trademark rights and avoid an abandonment claim.

July 14, 2015 By Eric Misterovich

Infinite duration is one of several benefits of owning a trademark; however, a trademark may be lost or abandoned. According to the International Trademark Association, a trademark can be lost through action or inaction of the trademark owner. “The most common way to lose rights in a mark is to stop using the mark with no intention to use it again. This is called ‘abandonment of trademark rights.’” This article will explore how a trademark may be lost or abandoned by its owner.

Standard of Proof for Abandonment

According to United States trademark law, the standard of proof for abandonment is a clear and convincing burden (PDF). In the legal field, standard of proof is “the level of certainty and the degree of evidence necessary to establish proof in a criminal or civil proceeding.” A clear and convincing burden is less difficult to prove than the burden in a criminal proceeding, which is beyond a reasonable doubt. Clear and convincing proof means “that the evidence presented by a party during the trial is more highly probable to be true than not.

Non-Use

While temporary or seasonal non-use of a mark does not necessarily constitute abandonment, periods of non-use accompanied by the intent not to resume using the mark constitutes abandonment in the United States. Additionally, it is important to note that non-use for a consecutive three-year period creates a presumption of abandonment of the mark unless someone comes forward to contest it, regardless of whether it is a registered mark.

Rebuttal of Non-Use

Once non-use has been asserted against a trademark owner, the trademark owner has the burden to introduce evidence showing their intent to resume use of the mark and evidence showing that the trademark owner intended to resume using the mark during the alleged consecutive three-year period. The International Trademark Association provides five examples of how a trademark owner may provide the evidence referred to above. They include the following:

a showing that the trademark owner has sought regulatory approval for the goods and use cannot begin until the same is granted;
a showing of the distributors approached for the goods;
a showing of any purchased advertising for the goods that features the trademark;
a production internal “story boards” or presentations referring to goods bearing the trademark; or
a showing of an outside licensing agency that has been obtained.

Excusable Non-Use

Non-use may be excused because of circumstances outside of the trademark owner’s control in order to avoid abandonment of their mark. For example, the bankruptcy or insolvency of a trademark owner may be lead to excused non-use of the mark.

Improper Use of a Mark Leading to a Loss of Trademark

As mentioned in Essential Elements of a Trademark License Agreement, a trademark owner may license their trademark to another party, but the mark can be deemed abandoned if the trademark owner does not exercise adequate control over the use of its mark.

How to Expressly Abandon Your Application for a Mark

Finally, a trademark owner can expressly withdrawal or abandon their application for a trademark through the United States Patent and Trademark Office website.

For more information about abandonment of a mark, contact Revision Legal’s experienced trademark attorneys through the form on this page or call (855) 473-8474.

In the case of Christian M. Ziebarth v. Del Taco, LLC, Cancellation No. 92053501 (March 31, 2015) [not precedential], the Trademark Trial and Appeal Board set forth the standards for trademark abandonment. Christian Ziebarth (the “Petitioner”) filed a petition to cancel the mark NAUGLES, a standard character mark for restaurant services. In the 1970s, Naugles, Inc. operated a chain of restaurants under the NAUGLES service mark. In 1988, Del Taco, LLC (the “Respondent”) purchased all the assets of Naugles restaurant business, including the brand name. The last restaurant using the NAUGLES name closed in 1995 and Respondent has not re-opened a NAUGLES restaurant since that time.

Petitioner believed that the mark was legally abandoned. Petitioner is an on-line blogger who writes about food and restaurants. He noted that his blog post about the NAUGLES restaurant received a lot of comments from people who loved the food. This inspired him to open a restaurant named NAUGLES. Soon thereafter, he filed an application with the United States Patent & Trademark Office to register the mark. The Examining Attorney refused the application under Section 2(d) of the Trademark Act citing the registration for NAUGLES owned by the Respondent. The Petition to cancel was then filed on grounds of abandonment.

The Trademark Act defines abandonment under 15 U.S.C. §1127. It states in part that a mark is abandoned, “[w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment.” The burden of proof initially rests with the petitioner and once a prima facie showing is made the burden of production shifts to the trademark owner. The owner must show that the mark was used during the three-year period or that they intended to resume use within the reasonably foreseeable future. See Silverman v. CBS Inc., 870 F.2d 40, 9 USPQ2d 1778 (2d Cir. 1989).

In this case, during cross-examination of the Vice-President of Marketing of Del Taco, it was revealed that Del Taco stopped using the NAUGLES trademark as the actual name of the restaurant in 1995. The Vice-President of Marketing further stated that from the years of 1995-2010, it did not own a restaurant named NAUGLES. When asked if he currently owned a restaurant named NAUGLES, he responded no. However, the Respondent testified that use of the mark NAUGLES did continue in advertising and for clothing although it was not used for restaurants. Use of a mark on promotional goods such as clothing does not constitute service mark use. For more information on service marks, see our web page, What Is A Service Mark And How Can It Be Protected? The services identified in the trademark registration (restaurant services) must be rendered in commerce. Use of a mark for services requires more than merely advertising with the mark. Advertising a service is not the same as rendering the service. Therefore, the Respondents cannot rely on the sale of clothing even if such sale was considered advertising and the clothes were branded with the mark NAUGLES.

There was no evidence of record of Respondent’s use of the mark or its intent to resume use of the mark for restaurant services prior to 2003. Petitioner’s prima facie showing of abandonment for the years 1995-2003 was not rebutted. Although there was some evidence of use of the NAUGLES mark in 2003, these activities would start the use clock running again, but cannot cure the abandonment of the mark. In other words, later use of a trademark cannot retroactively cure a prior abandonment. In addition, Respondent was unable to provide any evidence of advertising dollars invested in advertising the NAUGLES brand for restaurant services after 1995.

Lastly, the Respondent argued that the NAUGLES brand maintained “considerable goodwill” from prior use. The Board has never found residual goodwill to be a sufficient defense to trademark abandonment. See Hornby v. TJX, 87 USPQ2d 1421 (2d Cir 1989). In the end, the Petition for Cancellation was granted. The Board determined that the Petitioner successfully proved a prima facie case of abandonment and the Respondent was unable to prove use or intent to resume use for restaurant services. Once a mark is determined to be legally abandoned, it goes back into the public domain for adoption by any third party. If you have questions regarded trademark abandonment, please contact our office for a courtesy consultation.

One of the challenges trademark owners face in maintaining their trademark is the risk of inadvertently abandoning their trademark when there is some period of non-use of the mark. Unbeknownst to many trademark owners, abandonment of a trademark can easily happen due to matters of ordinary practice, such as a temporary cessation of production, a failing product line, or low level of sales.

The Lanham Act, which is a federal trademark law, provides that abandonment of a trademark occurs when (1) the legal owner ceases to use the mark (non-use), and (2) the owner lacks intent to resume use of the mark in the reasonably foreseeable future. 1 As demonstrated below, the key to securing the rights to a registered trademark with the United States Patent and Trademark Office is to continue using the mark, and, possibly more importantly, to preserve evidence that the owner intends to resume use of the mark, if for any reason they cease use of the mark.

What Constitutes Non-Use?

The determination of non-use occurs on a case-by-case basis and is often confusing for trademark owners. Some courts (mainly Ninth Circuit and California district courts) offer a bright line rule that even a single instance of use prevents abandonment if such use is made in good faith. For example, in Electro Xource, LLC v. Brandess-Kalt-Aetna Group, Inc., the Ninth Circuit held that the Lanham Act requires complete discontinuance of use for abandonment. 2 On the contrary, other courts have held that token use or sporadic use is not a bona fide use under the Lanham Act. 3 For example, in Continental Grain Co. v. Strongheart Products Inc., the Trademark Trial and Appeal Board held that token annual sales of KIT KAT cat food for the purpose of maintaining trademark rights was sufficient to warrant a finding of abandonment. 4 Similarly, in Del-Rain Corporation v. Pelonis USA, Ltd., the Second Circuit held that low-level sales, such as sales of the remaining stock of an abandoned line of merchandise, do not constitute a bona fide use in the ordinary course of trade that suffices to defeat a finding of abandonment. 5

Courts do not have a uniform approach to determining what constitutes non-use; however, they have been consistent in putting great emphasis on the trademark owner’s intent. As discussed below, a trademark owner may be able to avoid abandonment by proving his or her intent to resume use of the trademark.

Intent to Resume Use of the Mark: Is Objective Evidence or Subjective Evidence Required?

Interestingly, courts tend to prevent abandonment when the trademark owner can provide objective evidence that the owner intends to resume use of the mark. Even courts that seem lenient in finding non-use due to low level of sales prevent abandonment of the mark when the owner shows such intent. 6

Note that the majority of courts now require the trademark owner’s “intent to resume use” rather than “intent not to abandon” to prevent abandonment of the mark. 7 In the landmark case Exxon Corp. v. Humble Exploration, the Fifth Circuit explained that “stopping at an intent not to abandon tolerates an owner’s protecting a mark with neither commercial use nor plans to resume commercial use. Such a license is not permitted by the Lanham Act.” 8

To prove a trademark owner’s intent to resume use of a mark, the trademark owner needs to present objective evidence. Objective evidence includes actual and concrete plans to resume use in the reasonably foreseeable future. On the other hand, self-serving subjective evidence, such as the owner’s self-serving testimony that he or she never had any intent to abandon the mark, would not suffice. 9 If courts look solely at the owner’s subjective intent, no mark would ever be held abandoned in contested cases. Courts have repeatedly held that the Lanham Act was not intended to provide a warehouse for unused marks. 10

Understanding the concept of abandonment of a trademark is crucial as abandonment may easily happen once the mark is not used for any reason. For the purposes of maintaining your trademark, the most important thing to keep in mind is to preserve objective evidence that demonstrates your intent to resume use of the mark, regardless of the period of non-use of the mark.

Footnotes

2. Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006).

3. See Metropolitan Life Insurance Company v. O’M & Associates LLC, No. 06 C 5812, 2009 WL 3015210 (N.D. Ill. Sept. 16, 2009); MB Financial Bank, N.A. v. MB Real Estate Services, L.L.C., No. 02 C 5925, 2003 WL 21462501 (N.D. Ill. June 23, 2003).

4. Continental Grain Co. v. Strongheart Products Inc., 9 USPQ2d 1238 (TTAB 1988).

5. Del-Rain Corporation v. Pelonis USA, Ltd., 29 Fed. Appx. 35, 37 (2d Cir. 2002).

6. See e.g., Grocery Outlet v. Albertsons, Inc., No. C 06-02173 JSW, 2008 WL 5245962 (N.D. Cal. Dec. 17, 2008) (finding that the trademark owner did not abandon the mark because the grocery store chain had continued to sell off inventory with the intent to resume use of the trademark within the reasonably foreseeable future); see also Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 537 (4th Cir. 2000); Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010).

7. Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102 (5th Cir. 1983).

9. Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1330 (11th Cir. 2008); Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 337 (1st Cir. 2004).

10. Imperial Tobacco Ltd., Assignee of Imperial Group PLC v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990); see also AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1550, 1 USPQ2d 1161, 1177 (11th Cir.1986), cert. denied, 481 U.S. 1041, 107 S. Ct. 1983, 95 L. Ed. 2d 822 (1987).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

The Trademark Trial and Appeal Board (the “Board” or “TTAB”) is making a concerted effort to clean up the Trademark Register of marks no longer in use in commerce. See our blog post entitled, The USPTO’s Efforts To Improve Accuracy Of The Trademark Register, for more on this topic. As a means to an end, the Board has established a pilot program (the “Expedited Cancellation Proceedings”) to shorten proceedings if the only grounds alleged are nonuse or abandonment. Of course, many of these types of cases may be resolved in advance of the TTAB identifying it for expedited proceedings. If an Answer is not filed in response to a Cancellation Petition for nonuse, there will be a default judgment and cancellation of the challenged registration. This typically occurs within 5-6 months from the filed Petition for Cancellation. However, if an Answer is filed in response to a Petition which has only asserted the grounds of nonuse or abandonment, it’s likely the case will be selected for an accelerated proceeding.

In theory, this appears to be a useful mechanism for a Petitioner who is seeking cancellation based on nonuse or abandonment. As of March 2018, the TTAB sought to identify newly filed cancellation proceedings limited to nonuse or abandonment grounds. If the case is selected for the pilot program then at the discovery conference, there will be an Interlocutory Attorney and an Administrative Judge that participates. The conference will explore all the typical subjects and in addition, will determine if the parties can stipulate to certain facts and evidence, explore ways to limit discovery, and possibly agree on using the “summary judgment ACR” model. The summary judgment ACR model allows the Board to treat the motion as the final record and will determine factual matters in dispute.

The Petitioner should seek total cancellation of the registration, if all of the goods and services are not in use in commerce. If only some of the goods and services have been abandoned, then the Petitioner should seek a partial cancellation. If your cancellation proceeding is not selected for the pilot program, and if you and opposing counsel can agree on an expedited proceeding, you may contact the Interlocutory Attorney to make a request. The USPTO anticipates that these proceedings will be shortened to approximately 9-11 months long, instead of an 18-month or longer trial schedule.

To prevail in a Cancellation Proceeding based on abandonment, the Petitioner must establish “standing” to challenge the subject registration. See our web page entitled, Filing An Opposition Or Cancellation Proceeding, where “standing” is discussed, or our web page entitled, The Standing Requirement For Oppositions And Cancellation Proceedings for more on the topic. In addition, the Petitioner must prove a prima facie case of abandonment by a preponderance of the evidence. Petitioner is required to prove that the registrant discontinued use of the trademark with the goods or services identified in the registration with intent not to resume use. If the Petitioner cannot make this showing, in the alternative Petitioner has the opportunity to make a prima facie case by demonstrating three consecutive years of nonuse of the mark in commerce. If a prima facie case is proven, the burden shifts to the registrant to show use of the mark in commerce during the three-year period OR intent to resume use through justifiable nonuse.

There may be times when a trademark practitioner will need to advise a client that it is in his best interest to abandon a trademark application or withdraw a Trademark Trial and Appeal Board (“TTAB” or “Board”) proceeding. One scenario may be that a trademark applicant seeks legal counsel only after he filed an application without first conducting a trademark clearance search. If an applicant fails to conduct his due diligence, then when the application is published for opposition, a third party may oppose the application alleging a likelihood of confusion between the applicant’s mark and his registered trademark. If it is likely that confusion would occur between the source of the two marks and the opposer has senior rights in the mark, it may be wise to advise the applicant to abandon the application. However, there may be negative consequences to taking this action.

Keep in mind that typically a trademark applicant can abandon his trademark rights in an application by filing an express abandonment. However, if a trademark applicant chooses to abandon his rights in the subject trademark application after the commencement of an opposition, concurrent use proceeding, or interference, the applicant must acquire the written consent of every adverse party or else judgment shall be entered against the applicant. See 37 CFR §2.135 for more details regarding this circumstance.

Moreover, there will also be negative consequences for a trademark applicant if a default judgment is entered against him or if a TTAB action is dismissed “with prejudice”. If either of the two actions occur a trademark applicant is precluded from filing the same trademark, in the same format, for the same goods or services that were the subject of the proceeding. There are some extenuating circumstances that would provide some exceptions to this general rule. One scenario would be if the opposing party closed its business or abandoned its trademark.

There are also circumstances that may require a trademark practitioner to advise a client to withdraw an opposition or cancellation proceeding. For example, if a party initiates an opposition or cancellation proceeding and then learns of unfavorable facts that will negatively impact his case, the party may wish to withdraw the proceeding. This could only be accomplished, without the opposing party’s consent and without a dismissal with prejudice if an answer has not yet been filed. However, if an answer was filed the proceeding cannot be withdrawn without prejudice unless written consent of the opposing party is acquired. See 37 CFR §2.106(c) for more information on this subject.

If the action is withdrawn without prejudice, a new proceeding can be filed against the same mark at a later time. Conversely, if the case is withdrawn or dismissed with prejudice, then the party in the position of the plaintiff would then be barred from filing another proceeding (either an opposition or cancellation action) against the specific form of the trademark for the goods and services listed in either the application or registration. However, the plaintiff would not be barred if the mark was modified and perhaps a design element was added or if the goods and services were amended or altered.

In the majority of cases within our practice, we advise our clients to explore alternative business resolutions before committing to pursuing proceedings at the TTAB. There are several disadvantages of Board proceedings. One is that the Board will not consider market place realities. Another is that the Board will not necessarily be educated about a client’s particular business. Instead, they will look to the four corners of the trademark application and/or registration to determine the scope of a party’s goods or services and to determine if there is a likelihood of confusion.

In addition, it is important to be mindful that the jurisdiction of the TTAB is limited to determining if a mark is entitled to registration and nothing more. It cannot award money damages, attorney fees, or order an injunction. Often, it makes good business sense to negotiate an amicable settlement. This would require each party to agree to a compromise, but would allow the respective parties to continue with their businesses without interruption and without payment of significant litigation costs. The TTAB does not require the settlement agreement to be filed and made a public record. All that is required is that the parties file a document dismissing the action. This allows for the terms of the settlement to remain confidential. It is important that a trademark applicant seek legal counsel before filing a trademark application, before possibly abandoning an application, or before withdrawing a TTAB proceeding. If you have trademark inquiries, please feel free to contact our office for a courtesy trademark consultation.

Copyrights and patents expire after a fixed term, but trademark rights will continue in perpetuity as long as a mark remains in use. Trademark rights are a “use it or lose it” proposition—if the marks are abandoned, the rights will be lost.

Merely ceasing use of a mark does not result in its abandonment. A mark owner must discontinue use of a mark with the intention not to resume use in order to abandon its trademark rights.

Abandonment can serve as a defense to a claim of trademark infringement. The defense applies when the alleged infringement is premised on use of a mark that occurs after that mark has been abandoned. The abandonment defense applies to alleged infringement of both federally registered marks and common law (or unregistered) marks.

Abandonment is also grounds for cancellation of a trademark registration.

Abandonment requires proof (1) that use of a mark has been discontinued, with (2) intent not to resume use of the mark. The party asserting abandonment bears the burden of proving these elements by clear and convincing evidence.

Discontinued Use of a Mark

Prolonged nonuse of a mark for three or more consecutive years creates an inference or presumption that there is no intent to resume use of the mark. The presumption of abandonment can be overcome by evidence indicating a valid reason for the suspension of use and an intent to resume use of the mark in the near future.

Forced suspensions of use due to temporary factors outside the trademark owner’s control, such as weather events, natural disasters, terrorist acts, or temporary legal prohibitions (such as a trade embargo), are generally not sufficient to support an inference that the owner does not intend to resume use of a mark.

Example: A devastating flood occurred last year in Ellicott City, Maryland, causing many of the Main Street businesses to shut down for several months while the area was cleaned up and the business premises were renovated and restored. The fact that these businesses temporarily stopped operating under their marks did not cause an abandonment of their trademark rights because they intended to and did reopen their businesses under their marks once the necessary clean up and renovations were completed.

Not using a mark because of product redesign or interruption of production for retooling equipment also provides a reasonable explanation for the temporary non-use of a mark and indicates an intent to resume use.

Additionally, non-use of a mark due to lack of demand for products or services could possibly be overcome by the trademark owner’s proof of continuing marketing efforts.

Example: A court determined that non-use of a mark for five years due to financial difficulties did not constitute abandonment of the mark because the non-use was involuntary and the owner continuously sought to sell the mark at all times during the period of non-use, and ultimately sold it to a buyer who resumed use of the mark.

Intent to Resume Use

“Intent to resume use” of a mark also requires that a mark owner intend to resume use within the reasonably foreseeable future. A claimed possibility of resuming use of a mark at some indefinite future point would likely be insufficient to overcome an abandonment argument. Instead, a mark owner needs to be able to demonstrate plans or ongoing efforts to recommence use of its mark in the foreseeable future once the reason for the suspension of use has been addressed.

Example: A business that announces it is closed for renovations but will reopen in three months can establish an intent to resume use of its mark and no abandonment. On the other hand, a good case for abandonment can be made when a business announces that it is changing its name, or when it closes its doors and ceases operations with no ongoing efforts or intention to reopen or to sell to a buyer who will do so.

Additionally, to avoid abandonment the trademark use must be active commercial use in the ordinary course of trade, and not mere token use to reserve rights in a mark. If a product is discontinued but the manufacturer produces and distributes a handful of product under a brand name each year in an effort to reserve rights in its brand name, such effort is not the bona fide commercial use of a mark in the ordinary course of trade sufficient to avoid abandonment.

Abandonment by Acts or Omissions

Trademark rights can also be abandoned as a result of acts or omissions of the trademark owner that cause a mark to lose its significance as a mark.

A mark will be abandoned if it becomes the generic name for the products or services with which it is used. Because a generic term identifies the products or services themselves, it is incapable of performing the trademark function of identifying and distinguishing the source of such products or services.

A trademark can become the generic name for the products or services with which it is used if the trademark owner fails to use the mark correctly in advertising and selling its products or services, or fails to prevent generic or infringing uses of its mark.

Example: The terms “aspirin” and “thermos” were once brands that became generic and lost their trademark protection. The marks XEROX and KLEENEX were also once in jeopardy of becoming generic and relegated to the public domain. To avoid this fate, the marks’ owners ran ad campaigns to educate consumers as to how to perceive and use these marks as source identifiers rather than as the common name of the product itself. One of Kimberly-Clark Corporation’s ads explained “‘Kleenex’ is a brand name . . . and should always be followed by an ® and the word ‘Tissue’. [Kleenex® Brand Tissue] helps us keep our identity, ours.” One of Xerox Corporation ads stated “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.” Another Xerox ad campaign advised consumers: “When you use ‘Xerox’ the way you use ‘aspirin’ we get a headache.” More recently, Google successfully fended off a claim that its mark had become the generic term for “internet search” by establishing that consumers are still aware of its trademark significance even though they may use the term generically by using the phrase “google it”.

When a trademark owner permits third party use of the same or a similar mark that otherwise would be infringing, it risks diminishing the strength and distinctiveness of its mark and weakens its ability to enforce its trademark rights. If such third party use is extensive, it could ultimately give rise to destruction and abandonment of the mark, because a trademark is supposed to symbolize only one source. For this reason, it is critically important for trademark owners to police their marks and take appropriate action against infringers.

Finally, trademark rights can be abandoned through omission, such as in the case of naked licensing. Naked licensing occurs when a trademark owner permits a third party to use its mark without both retaining and exercising control over the quality of the products or services sold under the mark.

Any time a mark owner allows a third party to use its mark, it needs a written license agreement that specifies the licensor’s right to review and approve the quality of the products or services provided under the mark, along with the nature and scope of the permitted use, the form of use of the mark, the parties’ termination rights and indemnification obligations, the duration of the license, whether the use is exclusive or non-exclusive, whether the rights are transferable, any license fees or royalties, and an acknowledgement of the licensor’s ownership rights.

What Constitutes Non-Use?

Intent to Resume Use of the Mark: Is Objective Evidence or Subjective Evidence Required?

Footnotes

2. Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006).

4. Continental Grain Co. v. Strongheart Products Inc., 9 USPQ2d 1238 (TTAB 1988).

5. Del-Rain Corporation v. Pelonis USA, Ltd., 29 Fed. Appx. 35, 37 (2d Cir. 2002).

7. Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102 (5th Cir. 1983).

9. Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1330 (11th Cir. 2008); Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 337 (1st Cir. 2004).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

How to Avoid Abandonment of a Trademark
Don’t let that trademark certificate fool you. It might declare that you own trademark rights to a logo or name, but you can lose those rights just as easily as you acquired them.

A trademark registration certificate from the United States Patent and Trademark Office (USPTO) is really just a single step in the journey that is trademark ownership. Now that the USPTO has granted you trademark rights, you must do your part and protect those rights.

The USPTO does not police the market for unauthorized uses of your mark. Nor will it enforce your rights for you. The onus lies with the trademark owner to prevent others from infringing on their trademark rights.

Only businesses that actively monitor and protect their marks, searching out and prosecuting cases of infringement, will continue to benefit from trademark rights. Businesses that fail to protect their trademarks will see their rights be diluted and possibly canceled through litigation.

There are two primary ways businesses can put their trademarks at risk: through non-intentional acts of the owner, and through non-use of the mark.

Non-intentional acts of the owner

There are many different non-intentional acts that can precede the loss of trademark rights, but they all relate to the owner’s failure to protect the mark.

Uncontrolled licensing of a mark can lead to the loss of trademark rights. Sports leagues are shining examples of controlled licensing. Not only do they screen licensees, but they police the market for unauthorized use of their trademarks. If a rogue store sells merchandise bearing a team’s or the league’s trademarks without prior authorization, it will face a lawsuit. Sports leagues rarely let trademark infringement cases go without a fight.

Trademark owners must also look out for any other products or services using the same or similar marks. While the same or similar names can exist across different classes of goods and services — “DOVE” is a registered trademark for both a soap and a candy bar, produced by different companies — trademark owners still need to monitor such uses. Trademark infringement cases are based on the likelihood of confusion. That is, if consumers will likely confuse one for the other, there might be infringement.

Unsavory or unfavorable publication of a mark can tarnish it. Businesses can and should police for this type of usage and prevent it from spreading further. Frequent and varied use of distinctive marks in negative contexts runs directly counter to the positive aspects of trademark registration and should be actively monitored for preventative purposes.

Failure to police against these types of trademark misuse can dilute the mark’s meaning. Since trademarks are issued to create and preserve distinctiveness, anything that dilutes the meaning of a mark can precede its cancellation. Businesses cannot be satisfied with the certificate from the USPTO. Without protective measures, a mark can lose meaning and face cancellation.

On the other hand, thorough protection of branding and effective market permeation can actually lead to so-called “genericide”. The term refers to any mark that has gained such prevalence that it is used as a generic reference for all products in the same vein. Marks that have suffered from this kind of success include Aspirin and Cellophane, just to name a few. Once a term has reached sufficient generic usage, third parties can seek cancellation of a mark through this argument.

Non-use of a mark

While policing the unauthorized usage and reproduction of marks can go a long way towards preserving trademark rights, one’s own house deserves equal consideration. The trademark institution was designed based on usage of marks, not registration alone. Active use is therefore intrinsic to maintaining a trademark.

For this reason, trademark owners must prove continued use on a regular basis. Between the 5th and 6th year after registration, businesses must submit proof of continued use. They must then renew their trademarks every 10 years after the registration date. Non-use of a trademark for three consecutive years is considered abandonment unless somehow proven otherwise.

Maintaining relevant record of use is important, since failure to do so opens your mark to cancellation by litigation. Fortunately, attempts to prove non-use require compelling and conclusive evidence, since the matter involves complete forfeiture of respective trademark rights. However, without adequate attention to maintaining and recording usage with the USPTO, cancellation remains a possibility.(Harvard has more information on this here)

In any of these circumstances, simple actions can be taken to assure that trademark rights are maintained. Regular policing of usage and licensing can help protect reputation and prevent dilution. Keeping accurate and relevant records of usage can prevent third-party pursuit of cancellation. Through these simple, if sometimes arduous, measures, trademark rights and protections can be maintained to the benefit of brand reputation and revenue generation. Consulting with a trademark attorney can help ensure you avoid facing the potential of losing your trademark.

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

What will happen if someone sues me for trademark infringement

A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances. However, in most cases, trademark owners choose to sue for infringement in federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.

If the trademark owner is able to prove infringement, available remedies may include the following:

a court order (injunction) that the defendant stop using the accused mark;
an order requiring the destruction or forfeiture of infringing articles;
monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and
an order that the defendant, in certain cases, pay the plaintiffs’ attorneys’ fees.

Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff’s claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail.

How do I know whether I’m infringing?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.

Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant’s intent in adopting its mark; and the strength of the plaintiff’s mark.

The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.

In addition to claiming likelihood of confusion, a trademark owner may claim trademark “dilution,” asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner’s mark by “blurring” the mark’s distinctiveness or “tarnishing” the mark’s image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.

An experienced trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner’s claims.

Sources

15 U.S.C. §§1114, 1116-1118

Black’s Law Dictionary (9th ed. 2009)

McCarthy on Trademarks & Unfair Competition (4th ed. 2014)

The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an attorney. Reference to any specific organizations, attorneys, law firms, corporations, or websites does not constitute the USPTO’s endorsement or recommendation.

How to Avoid Abandonment of a Trademark

Filing for a trademark is a necessary step in marketing and branding your organization and products. At the same time you also step into a world of bureaucracy and hard deadlines. Skip a step or blow a deadline and you might find a nasty notice from the United States Patent and Trademark Office (USPTO) in your mailbox.

Perhaps the nastiest of these is the Notice of Abandonment.

The USPTO issues a Notice of Abandonment if they do not receive proper correspondence during the lifespan of a pending trademark application. An applicant might receive a Notice of Abandonment for any number of reasons, including unintentional non-responses and mistakes in mailing during teh trademark registration process.

Thankfully, the USPTO offers clemency for companies that make these mistakes. Forgetful applicants have opportunities to reclaim their registrations. The specific avenues available depend on the manner of abandonment and the application’s specific circumstances.

Abandonment happens

Once you submit your trademark application, the USPTO will review it. The process usually takes four to six months. If the USPTO finds issues with your application, including technical errors or similarities to existing marks, they will issue an Office Action. Therein you will find the action necessary to complete the review process.

The USPTO requires responses to Office Action letters within six months of its mailing date. Abandonment most frequently occurs at this stage. If you fail to respond, for any reason, the USPTO will issue a Notice of Abandonment.

In some cases the USPTO will send the Office Action to the wrong address. This is the least common, but the most recoverable. Other cases include simple failure to respond due to inaction, failure to respond to a Notice of Allowance with a Statement of Use, and non-reception of the Office Action by the applicant.

Reviving an abandoned trademark application

If the USPTO sends the Office Action to the wrong address, the applicant has a simple path to reinstatement. They must fill out and file a Request for Reinstatement form. Along with the form, the applicant must submit a signed statement, from someone with first-hand knowledge of the facts leading to abandonment. The deadline for this request is two months from the mailing date of the Notice of Abandonment.

If the applicant received the Office Action letter, but the failure to respond in the prescribed time period was unintentional, the USPTO requires a Petition to Revive the application. Along with the petition, the applicant must pay a $100 fee and provide two further pieces of information. First, a statement signed by an individual with first-hand knowledge of the facts. Second, they do require a complete response to the Office Action. The deadline for this action is two months from the date of the Notice of Abandonment.

If the applicant does not file a Statement of Use or apply for an Extension Request in response to a Notice of Allowance, he must file additional paperwork. The applicant must also submit a statement that the delay was unintentional, signed by someone with first-hand knowledge of the facts. The applicant also owes all required fees for Extension Request that became due since the Notice of Allowance was issued, plus the $100 petition fee. Finally, the applicant must submit the Statement of Use if the applicant is using the mark in commerce. All of this is due within two months from the date of the Notice of Abandonment.

If the applicant claims to have never received the Office Action letter or Notice of Allowance, they are also subject to the $100 petition fee. In this case the only filing required is the statement that the delay was unintentional, signed by someone with first-hand knowledge of the facts. Again, this filing is due within two months from the mailing of the Notice of Abandonment.

Keep in mind that you likely already have some legal protection under common law trademark rights.

Avoiding Abandoned Trademark Applications

With the mountain of paperwork that can accrue in the event of abandonment, prevention is the best practice. You can take steps to reduce the chances of your application being abandoned:

When submitting an application, update your contact information with the USPTO to avoid any errors in contact
Monitor the status of your application throughout its lifespan
Be sure to make all paperwork pertaining to registration a high priority for response, in order to avoid any last-minute deadline issues and a consequent workload

Regardless of the specific circumstances surrounding abandonment, it is important to know your options for reviving an application and seeing it through to registration. Know the events of abandonment, reference the required actions for revival, and file them in a timely and complete manner. Without question, registration is the goal, and any additional paperwork required in the process of becoming a trademark owner is worth the time and energy.

How to Avoid Abandonment of a Trademark

Too often, trademark owners make the common mistake of failing to comply with trademark requirements after their marks have been registered. Much to their dismay, they lose their rights to their marks and are left without the protection of the law. It is important to remember that trademark rights can be lost almost as easily as they are granted. Be sure to follow the necessary requirements to not lose your trademark.

A trademark can be either a word or symbol that distinguishes one’s products or services from another’s. To start the process and prevent competitors from using your business name, logo or look, file a trademark registration application with the United States Patent and Trademark Office (USPTO).

§15 of The Lanham Act permits trademarks that have been registered for 5 years with a showing of actual use in commerce to become incontestable. An incontestable mark will conclusively establish validity and the registrant’s ownership and exclusive right to use the mark in commerce.

However there are some circumstances in which even an incontestable mark can be lost. To avoid losing the rights your trademark, incontestable or not, make sure to avoid the following common mistakes made by trademark owners.

1. Abandonment / Non-Use

How to Avoid Abandonment of a Trademark

Trademark owners who abandon their trademarks, stop using them in commerce, can lose their rights to their mark.

In the U.S., trademarks are awarded on “use” rather than registration. Although there are many benefits to registering your trademark, its is not required. § 45 (15 U.S.C. § 1127) of the 1946 Trademark Act defines a trademark as a word, name, symbol or device used by a person with a bona fide intent to use the mark in commerce. As a result, a trademark can be lost when an owner stops using his or her mark in commerce.

A trademark owner who ceases using his or her trademark in commerce, without the intent to resume use in the future, will be considered to have abandoned the mark §15 USC 1127. The Lanham Act further states that non-use of a mark for 3 consecutive years will create a rebuttable presumption that the mark has been abandoned.

Temporary or seasonal non-uses will be forgiven if they are ordinary practices of a particular industry or market. For example, a snow blower rental company that stops using its trademark in commerce during the summer time (where there is no snow to blow) will not be penalized.

2. Lose Your Trademark Because it is Too Generic

How to Avoid Abandonment of a Trademark

A mark that starts being used by the general public and becomes too generic will lose its protection

A mark becomes too generic when the courts decide it has lost its inherent distinctiveness required to obtain a trademark. A mark’s distinctiveness is what allows consumers to identify the source of a product where a generic term merely describes the type of product being sold.

For example, the words “sofa” or “couch” can never be trademarked for a furniture manufacturer because there is no other way to describe the items being sold. Where there is no other way to describe the product, competitors will not be able to sell similar products without infringing the trademark owner’s rights.

However, words that were not initially generic when trademarked, can become generic and lose their trademark if the general public begins to use the word to describe the product. Where a trademark is associated with the product or service rather than being an actual product or service, it has become generic. Common examples of this include words such as Aspirin, Band-Aid, Escalator and Yo-Yo. Kleenex and Xerox are on the brink of becoming generic as well.

3. Naked Licensing / Failure to Police

How to Avoid Abandonment of a Trademark

A trademark owner who fails to adequately monitor, control and police his or her mark can lose it

An owner of a trademark who licenses his or her mark to others is required to control, enforce and inspect the quality of the goods and or services sold by the licensees. Failure to properly police the product results in “naked licensing” which will result in an involuntary abandonment of the mark.

The naked licensing rule derives from the theory that an unmonitored trademark of lesser quality does not adequately represent the true quality and integrity of the mark. As a result, consumers will not receive the goods or services they generally expect from the particular mark. This conflicts with the heart of trademark laws that is consumer protection.

4. Misrepresentation and Fraud

How to Avoid Abandonment of a Trademark

Misrepresentations of material facts and fraud can cause you to lose your trademark

An incontestable mark can also be lost where the trademark owner has committed fraud or misrepresented material facts when obtaining the trademark registration with the USPTO.

Owners who lie about the date their mark was first used in commerce, or about their ownership interest in the trademark will be deemed to have committed fraud and lose their trademark. In addition, owners who make any misrepresentation of material facts on their application can lose their trademark rights.

Although this is an illustrative list of common issues that can cause you to lose your trademark, it is not an exhaustive list. Be sure to research other, less common, pitfalls after you have successfully registered your trademark.

Owners who wish to maintain ownership of their trademarks should register, use and renew them. A trademark that has fallen out of use for a significant period of time or has been misused may be considered abandoned. Another party then may be able to use the trademark without infringing on the original owner’s rights.

Abandonment means that a trademark has fallen into the public domain and another party may take it over. Once the other party begins to use the mark, it can prevent others from doing so. The trademark will therefore no longer be considered abandoned.

If a business is accused of infringing another’s trademark rights, it may use abandonment as a defense, claiming that the trademark was available at the time the business started to use it. Alternatively, the registration of a trademark may be cancelled if a business that wants to use it asks for a determination that the mark has been abandoned.

While trademarks are sometimes purposely abandoned because a business no longer needs or wants them, other times the abandonment is implied. A business that has worked hard to build recognition of and goodwill toward its mark may come to regret the inaction or misuse that leads to its loss of trademark rights.

What are indications of trademark abandonment?

Trademark abandonment may occur in several situations. Under the federal Lanham Act, nonuse of a trademark for three consecutive years is strong evidence of abandonment. The original owner of the mark, however, may be able to show that it did not intend to abandon the mark, presenting evidence that it used the mark in the ordinary course of trade or that it planned to resume use. Courts are typically reluctant to find abandonment of a trademark where the evidence of abandonment is not strong.

If a company goes out of business permanently and has no intent to begin again вЂ” and it has not sold its trademarks to anyone else вЂ” the trademarks can be considered abandoned. If, however, the company temporarily stops business, the assumption should not be made that it has abandoned its marks.

A business may simply announce that it will no longer use its trademarks, although this is rare. Once a trademark is abandoned and another party begins to use it, the original owner of the mark must not use it anymore.

How can trademark abandonment be avoided?

The most straightforward way to avoid trademark abandonment is to continue using the trademark on goods in commerce. There are other pitfalls to avoid, however.

When one business licenses its trademark to another business, it should supervise the use of the mark. If it fails to do so, some courts will find that the first business has granted a “naked” license and abandoned its rights to the mark. If the first business engages in proper supervision and ensures consistent quality, however, the interests of the public will be protected and the trademark will not be abandoned.

It is also important to make sure that the mark does not become generic. When a trademark becomes generic, it comes to stand for all goods of its kind, not just those that originated with one specific company. Aspirin, for instance, used to be associated only with Bayer. Over the years, however, the public associated it with the product itself, no matter who made it, and Bayer lost its rights to that trademark.

Please contact an attorney if you have questions about the abandonment of a trademark.

DISCLAIMER: This site and any information contained herein are intended for informational purposes only and should not be construed as legal advice. Seek competent counsel for advice on any legal matter.

by Sandra Edelman · September 13, 2019

How to Avoid Abandonment of a Trademark Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these circumstances, will judgment be entered against the applicant and in favor of opposer in the proceeding? It depends on how the settlement agreement is phrased, according to a recent decision of the TTAB on reconsideration in Kathy Michael d/b/a Cedar Cove Inn v. Debbie Macomber, Inc., Opp. No. 91239859 (non-precedential). Unless the settlement agreement specifically states that the opposer expressly consents to the abandonment of the application, judgment will be entered against the applicant.

The opposer in Macomber entered into a settlement agreement with the applicant that included a number of substantive provisions concerning ongoing use and registration of the parties’ respective marks. With respect to the opposed application, the agreement specified: “Express Withdrawal of Application. [Applicant] shall, by December 14, 2018, expressly withdraw pending U.S. Trademark Application No. 87586893.” The Agreement did not include a specific provision as to how the opposition proceeding itself would be resolved.

After the settlement agreement was executed, the applicant filed a motion to abandon its application without opposer’s written consent. Three days later, the TTAB entered judgment against the applicant, the opposition was sustained, and the application refused. So far so good for opposer.

But the next day, the applicant filed a “corrected” motion to abandon the application, this time including an allegation of opposer’s consent based on the signed settlement agreement. The Board then issued an order noting the corrected motion to abandon the application with opposer’s written consent and dismissed the opposition without prejudice. Not so good for opposer.

So the opposer filed a request for reconsideration, arguing that the Board had erred in accepting applicant’s assertion in the “corrected” motion that the signed settlement agreement constituted the required written consent to abandonment of the application that would result in a dismissal of the opposition without prejudice. On take three for the TTAB, the Board agreed that it had indeed erred by dismissing the opposition without prejudice in response to the “corrected” motion.

According to the Board, Trademark Rule 2.135 provides that after an opposition has been commenced, if the applicant files a written abandonment of its application “without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant.” The Board agreed with opposer that at no point in the settlement agreement did it provide its express consent to withdrawal of the application. According to the Board, signing the settlement agreement just “means that the parties consent to settling their dispute on the terms set forth in the agreement.”

The Board further rejected applicant’s argument that the reciprocal promises included in the settlement agreement should be construed as a consent to the withdrawal, even though the settlement agreement did in fact provide for the withdrawal of the application. In other words, just including terms in a settlement agreement requiring the applicant to withdraw the opposed application — but without also specifying either that opposer consents to the withdrawal or that the parties agree that the opposition will be withdrawn instead of being sustained — will not be considered the equivalent to express consent by opposer that will lead to a dismissal of the opposition without prejudice.

Here are the takeaways from the Board’s decision on reconsideration:

If an applicant wants to withdraw its application and not have judgment entered against it in the proceeding, the settlement agreement must specifically provide that the withdrawal will be with the express consent of opposer
One way to ensure that the parties mutually understand how an application will be abandoned is to attach an exhibit with the form of abandonment (and exact language) agreed to
If an opposer wants to have judgment entered against the applicant, silence in a settlement agreement about whether consent will be provided to the abandonment of the application will be construed against the applicant, and opposer will be entitled to judgment sustaining the opposition.

Section 45 of the Lanham Act states a trademark is considered abandoned when “its use has been discontinued with intent not to resume such use.” Abandonment may be inferred from the surrounding circumstances, but proof of nonuse for three consecutive years is prima facie evidence of abandonment. Since use of a mark must be bona fide and registration cannot be used to reserve rights in a mark (apart from intent to use applications), a challenger seeking to cancel a registration on the basis of abandonment must either provide evidence of three consecutive years of nonuse or prove (1) the respondent discontinued use, and (2) the respondent intended not to resume use.

In Ross Bicycles LLC v. Century Sports, Inc., Cancellation No. 92067406, 2020 TTAB LEXIS 128 (T.T.A.B. Mar. 27, 2020), the challenger filed a petition to cancel the mark ROSS for “bicycles and structural parts thereof.” There were many evidentiary objections, and ultimately, the TTAB’s decision was based merely on oral testimony and one screenshot from a website selling a bike with the ROSS mark. The TTAB concluded that the reliable oral testimony presented by the challenger established a prima facie case of abandonment because the mark was shown to not have been used in commerce during the period of at least July 2013 through November 2017, which corresponded to the time period between when the trademark owner acquired the mark and when the petition for cancellation was filed. Additionally, there was no evidence that the owner intended to resume use of the mark. The Board, therefore, granted the cancellation petition and cancelled the registration on the basis of abandonment.

In contrast, the TTAB declined to find abandonment in My Organic Zone v. Shawgo, Cancellation No. 92068377, 2020 TTAB LEXIS 123 (T.T.A.B. Apr. 10, 2020). There, the Respondents owned a registration for the mark “Organic Zone” for online retail store services and café-restaurants featuring both food and clothing. The Petitioner filed a petition to cancel on the grounds of abandonment, arguing the mark was not used in commerce for at least three years, since April 2015. The TTAB found that the evidence did not establish any period of nonuse, and therefore, the mark was not abandoned. The evidence on which the TTAB based its decision was the Respondents’ interrogatory responses, which showed the registered mark was still in use in commerce and had not been discontinued for any period. The trademark owner came forward with specific information regarding prior and current use of the mark, as well as showed product offerings that used the mark.

Most recently, the TTAB considered abandonment of the CHICLETS trademark in Retrobrands USA LLC v. Intercontinental Great Brands LLC, Cancellation No. 92066647, 2020 TTAB LEXIS 239 (T.T.A.B. May 29, 2020). Retrobrands filed a petition for the cancellation of the Chiclets trademark registrations on the grounds of abandonment, arguing that the marks had not been used in the United States for a period of at least three years. Retrobrands is in the business of relaunching formerly famous, now abandoned brands, and it filed an application for registration of the mark CHICLETS for chewing gum; this gave Retrobrands standing to petition for cancellation of the mark.

Since 1900, Chiclets branded gum has been sold in the United States; various companies have acquired the Chiclets brand over the years, and most recently in 2011, it was acquired by Mondelēz, of which the Respondent is a part. It was undisputed that Mondelēz North America sold Chiclets branded gum through March 2016, when it decided to discontinue sales of Chiclets in the United States; the Respondent presented evidence that sales continued through the end of 2016. During 2016 and 2017, Mondelēz Exports, another division of the Mondelēz family considered whether to continue sales of Chiclets branded gum. Petitioner filed the petition for cancellation on August 9, 2017. Mondelēz Exports began distributing Chiclets gum in the United States by April 2018, after entering into an agreement with a distributor to import and sell the products. Evidence of sales since 2018 led the TTAB to conclude that the sales were not “token” sales. Based on these facts, the TTAB found that the Petitioner did not establish three years of nonuse, and therefore, did not establish prima facie abandonment. Nevertheless, because there was a period of nonuse from approximately January 2017 through April 2018, the Petitioner could still show abandonment if it could prove that the Respondent intended not to resume use of the mark.

In an effort to meet its burden, the Petitioner presented evidence that the Respondent had not done any advertising or marketing to promote the product since 2015. The TTAB found this evidence showed that only one member of the Mondelēz family decided to discontinue selling Chiclets branded gum, not that the entire family of companies intended not to resume use. The Petitioner also showed product lists and customer service emails showing the Chiclets branded gum had been “discontinued.” The TTAB again found this evidence was limited to Mondelēz North America, not the entire family of companies. The TTAB concluded that the Petitioner did not meet the burden of establishing that the Respondent did not intend to resume use of the mark; therefore, the registration was presumed valid. The TTAB considered the Respondent’s evidence, even though it did not have to, and found that there was an intent to use the mark based on the fact that another member of the Mondelēz family considered taking over the Chiclets branded gum by at least January 2017, and ultimately began distributing the product again in April 2018.

These cases illustrate that a prima facie case of abandonment is easily establish upon a showing that a mark was not in use in commerce for at least three years. If such evidence of consecutive non-use is unavailable, it becomes much more difficult to prove abandonment. To carry its burden, a challenger must show not only that the trademark owner discontinued use of the mark, but also that the respondent intends not to resume use of the mark.

Gene Markin is a Shareholder in Stark & Stark’s Complex Commercial, Intellectual Property, and Cannabis Litigation Groups where he concentrates his practice on complex litigation matters involving copyright protection and infringement, trademark and trade dress infringement and enforcement, trade secret litigation, false advertising, domain name disputes, unfair competition, class actions, fraud and consumer fraud, shareholder and partner disputes, breach of contract, cannabis business disputes, cannabis intellectual property matters, cannabis insurance coverage claims, cannabis regulatory compliance, RICO actions, and state licensing agency appeals .

(a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office . Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.

(b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.

(c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this paragraph including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicants should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.

To avoid the trademark objection, you need to follow certain guidelines while selecting the proper trademark. For that purpose keep avoiding distinct words, well known marks, prohibited marks, deceptive language.

How to Avoid Abandonment of a Trademark

A trademark objection may be raised by the examiner due to various reasons such as, in case third party objects to your intended trademark, similarity to an existing mark, the intended mark being deemed obscene, the intended mark hurts religious sentiments, etc. A trademark application can be objected for more than one reason.

You need to follow the certain things to escape the trademark objection. There is no rule of thumb to avoid the trademark objections. But you can avoid the objection if you choose the mark with more care.

Important points to keep in mind to avoid objection

Sometimes objections are raised just to seek the information. In that case, you just need to reply with the required information. As there is no specified process to avoid the trademark objection, the following points can help you to avoid objections:

Conduct mark and Phonetic Search

Before applying for trademark registration conduct a proper search of mark and phonetic sound to coin a unique trademark. Deep research of the database of the trademarks helps to form an exclusive and uncommon trademark. After analysing the trademark search report in case any similarity found in mark or sound then try to avoid such marks to avoid objection over the similarity of the mark.

Choose distinct words

A trademark has to be distinctive in order to get registered. Merely a descriptive mark doesn’t make it distinct enough for registration. Always use the word which is different, unique and non- descriptive. Trademark law does not allow the mark to get registered if the mark describes the nature of the product. It is advisable to use the word that has no dictionary meaning and has no direct reference to the product.

Avoid well-known marks

Never use words of popular brands and do not choose combinations of well-known marks even if the combination of the brand name is available to register. If a mark deemed to be a well-known mark or popular mark then applying the similar mark individually or in combination may raise the objection. To evade the objection try to avoid the popular marks even if they are not registered.

Avoid prohibited and scandalous marks

Trademarks that contain names, flags which are protected under Emblems and Names Act are rejected. Prevention of Improper Use (Act 1950) states that nothing of state or national concern like hallmarks, international organisations, armorial bearings that are protected under National Regulations cannot be registered as Trademark. A trademark can be objected on the grounds of scandalous mark or symbol.

Avoid deceptive and offensive language

Any third person or trademark examiner himself can oppose registration of a trademark by raising an objection that it propagates deception to the public. Deceptively means mark either associated with the geographic region or hurts the sentiments of the people related to religion. By

Do not use existing marks

The marks which are already recorded in the trademark database are certainly not registered again. Hence, if you are on the process with a trademark which already exists, then it is expected to be rejected and objected by the opposition and after that the trademark office.Try to differentiate between already registered class marks and how your class mark is different.

Do not imitate similar marks

Using of similar or identical trademarks means that trademark itself will lose its capacity to signify. The similarity in the trademarks confuses the customers regarding products. Dilution of the trademark is the only way to avoid the similarity in the trademarks. Be specific about your product i.e. mention how your product is different from similarly named products and why your product is not going to affect their market.

Reply to trademark objection

If the examiner objects to a filed trademark, then the examination report citing the objections can be viewed in the Trade Mark Registry website.

A written response needs to be filed by the applicant within 30 days of receiving the examination report from the department. In case, the examination report is not received, file your response as soon as it comes to your knowledge that reports have been issued online. Failing to respond to the objections raised by the examiner within the stipulated time of 30 days will lead to the abandonment of the trademark.

How to Avoid Abandonment of a Trademark

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How to Prevent Patient Abandonment

No matter how well a medical practice is ran, circumstances will eventually arise where you will need to terminate a relationship with a patient. Maybe it is the patient’s behavior, or maybe it is an innocent circumstance beyond anyone’s control, but sometimes the patient and the practice simply have to part ways. The problem is that if you end a patient relationship abruptly without proper cause and preparation, it can lead to claims of patient abandonment. Still, fear of accusations and litigation should not keep you from doing what is right for your practice and your patient.

Patient Abandonment

For abandonment to be claimed, there must be a clearly established relationship between the patient and the practice to begin with. The American Medical Association (AMA) suggests that three other basic conditions must exist to create patient abandonment:

•The termination is not a mutual decision between patient and practice.
•The termination took place without reasonable notice (suggested by the AMA to be at least 30 days).
•The patient is still in need of care after the termination takes place.

Reasons for Dismissing a Patient

There are several legitimate reasons for ending a relationship with a patient. It is vitally important in preventing claims of patient abandonment to make sure that the reason for the termination is legitimate and non-discriminatory. Some legitimate reasons for termination include:

•Patient’s non-compliance with prescribed tests or treatments.
•Patient is abusive or threatening towards clinical staff.
•Patient makes unreasonable demands of clinical staff.
•Patient does not pay for services.
•Patient misses appointments without notification.
•Relocation of practice.
•Retirement or departure of primary care provider at practice.

Steps to Prevent Patient Abandonment

There are a few basic tactics that can be used to reduce the likelihood that a patient can make a claim of abandonment:

•Create a patient termination policy and share it with patients early in the relationship, preferably at first contact.
•Accurately document every patient interaction with meticulous detail.
•Make an effort to determine the cause of the problems in the patient’s interaction with the practice and make a reasonable effort to resolve it.
•Discuss the situation with the patient before making a final decision about terminating the relationship.
•Before termination takes place, send a letter that expresses your concerns in a productive, professional and gentle way to the patient.
•Consult a colleague, legal advisor or risk-management professional about the situation.
•Speak with the patient directly and inform them that they are being terminated from care. Give a detailed reason.
•Inform staff at the practice of the termination.
•Officially notify both the patient and their insurance carrier through a certified letter with return receipt of the termination. State clearly that care will be discontinued in thirty days.
•Offer interim care to the patient.
•If you are able to do so (depending on your own policy and local laws), suggest potential alternate care providers to the patient and provide the patient with names and contact information for them.
•Inform the patient that you will transfer records to the practice of their choice when they give you written permission to do so.

It’s never easy to end a relationship of any kind, and the relationship between a patient and a health care practice is no exception. In this litigious society, a claim of patient abandonment can easily blossom into a costly lawsuit, so health care providers need to do what they can to protect themselves. By making sure that there is proper cause for the termination of a relationship and following the basic steps to be sure that the termination is handled fairly and professionally, a practice can reduce the risk of lawsuits or other unpleasantness that can arise from patients who feel abandoned.

Why would someone oppose your trademark application?

One of the top reasons why a third party would file a trademark opposition against your application is because they believe your mark is too close to theirs. Likelihood of confusion is the most common ground for trademark oppositions. In such a case, the burden falls on the opposer to show:

similarities between the respective marks, and
first use of the mark in commerce, known as priority.

Oppositions might also be filed on grounds of the mark being merely descriptive.

What is an extension of time to oppose?

A potential opposer may request an extension of time to oppose a trademark application. The amount of extended time requested will typically be 30 days or 90 days beyond the original 30-day publication window. Extension requests are routinely granted though a potential opposer must show good cause for a request beyond 30 days (e.g., needs additional time to investigate claim, confer with counsel, discuss settlement or seek counsel for representation).

An extension of time will not always lead to the filing an opposition. The potential opposer could go away on their own or seek settlement that would avoid the need for opposing the trademark application.

Who is the potential opposer?

If you have received notice of an extension of time to oppose, you will be notified of the identity of the potential opposer. This bit of information will allow you to search any registrations and pending applications filed by the potential opposer which might form their case for a likelihood of confusion claim.

TTAB trademark opposition vs. trademark lawsuit: What are the differences?

TTAB proceedings are a kinder, gentler form of litigation. There are no court hearings in TTAB actions, as nearly all matters are handled in writing. The Board does not have authority to impose any monetary sanctions.

Accordingly, TTAB proceedings generally cost significantly less than trademark lawsuits in federal court. Also, the issues in TTAB actions are limited to the registrability of a mark. Infringement is not litigated in TTAB proceedings, though certain underlying issues might serve as the basis for estoppel in a subsequent infringement action in federal court between the same parties.

How much does a TTAB trademark opposition defense cost?

The cost of defending a TTAB opposition will depend upon several factors, but the overwhelming factor will be how far the opposer is willing to go. If the opposer is determined to fight through till the end, then the cost of defending a trademark opposition can range from $50,000 to $150,000.

If both sides are willing to compromise to reach an early settlement that avoids discovery, then opposition defense costs may range from less than $2,000 to $5,000. My firm offers flat rates for TTAB trademark oppositions and cancellations.

What are first steps in defending against a trademark opposition?

If an opposition filed, you will receive the complaint called a Notice of Opposition containing the opposer’s identity, their grounds for opposition and details of their trademark filings which they believe are in conflict with your mark. This will give you an opportunity to assess the likelihood of confusion claim and any potential defenses or counterclaims.

You will also receive a Notice of Institution with a scheduling order setting forth key deadlines, including conference, discovery, disclosure and trial schedule dates. The most immediate deadline for a defendant-applicant is the Time to Answer which is generally 40 days from the filing date of the opposition. The next deadline is for a mandatory discovery conference which is spaced about 1 month after the answer deadline.

What early settlement options might be available?

If the opposer is open to a settlement that would allow your mark to coexist, then it may be worthwhile to explore any potential compromises including:

amendments to the identification of goods and services, including any exclusionary language
limitations on usage of your mark, which may include agreements to use your mark only in certain conditions (e.g., with your house mark)
agreements not to expand into certain product lines
changes to your mark, which might require filing a new application if the alterations are material

Productive settlement discussions may also lead to a coexistence agreement (aka consent agreement) that either side may file with the USPTO to overcome any refusals based on likelihood of confusion.

Any counterclaims to consider against opposer?

If the opposer has any pending or registered marks similar to your mark, it may be worthwhile to consider a more aggressive defense by filing a counterclaim or a separate TTAB proceeding against the opposer’s marks. These strategic considerations should involve your trademark counsel. The decision to go on the offense may be complicated and filled with several additional issues that are not readily apparent.

What if the applicant (defendant) fails to file an answer to the opposition?

If the applicant fails to answer the notice of opposition, the trademark application will ultimately be abandoned. Initially, the TTAB will send a Notice of Default containing an order allowing the respondent 30 days to show cause why judgment by default should not be entered against the applicant. Failure to file a timely answer tolls all deadlines, including the discovery conference, until the issue of default is resolved.

“A dead trademark or abandoned trademark is the trademark which is no longer recognized or validated by any national/regional office of trademark registry”.

There could be many diverse reasons for being a trademark or service-mark dead or abandoned, which are stipulated in paragraphs below. Information about how to claim or restore a dead trademark, is also provided separately in the lower section of this webpage.

What are the common reasons behind the abandonment of a trademark ?

Below are the most common reasons behind the abandonment of a trademark, which hold good for India and any other country worldwide :

Failure to Satisfy the Trademark Examiner/Registrar

After submitting the application for registering a trademark, if the applicant fails to respond punctually or satisfactorily to the concerned trademark examiner/registrar, then the proposed trademark may be abandoned by the trademark registry office

Express Abandonment

If the owner of any registered trademark fails to respond punctually or continually to the enquiries of the relevant office of trademark registry made from time to time, then the specified trademark may be deemed as abandoned. It could be because of the reason that the owner now no longer wants to use the trademark in commerce of the specified goods or products. Abandonment of any filed trademark by the applicant may also be made after losing a case of trademark opposition raised by a third party

Failure to Trademark Renewal

Failure to the timely renewals of any registered trademark, especially within one year after the expiry date of its original registration/previous renewal in India, makes a trademark invalid and dead

Failure to Monitor and ‘Genericide’

Failure to securing distinctive identity of one’s registered trademark, may result in making the trademark quite generic in people. A generic mark or word may not be sufficient as serving the purpose of a trademark/service-mark in the concerned jurisdictional marketplace

How to Claim or Restore a Dead Trademark ?

Claiming or restoring a dead trademark can be made possible, though with some probable hindrances or problems. This section provides very clarifying information in brief, to help the concerned people and companies located in India. Apart from helping new registrations of trademarks and service marks under all 45 classes of these in entire India, our highly prestigious and renowned IPR law firm of Delhi also offers services for claiming or restoring a dead trademark to Indian and global people and entities doing business in India.

To register an abandoned or dead trademark in India, the interested entrepreneur or company has to first ensure that the specified dead trademark is not in use by a person/entity located in entire India. For this purpose, necessary will be conducting a thorough ground search across the Indian trademark databases, business listings, and also on the internet. Even if it is found that the dead trademark is being used by an entity without getting that properly registered, registering the same will be impossible without consent of the user. Then, depending upon different cases, any of the following processes is to be performed for registering a dead trademark in India:

Filing a fresh application (in Form TM-1) for registration of one’s dead trademark through offering all necessary information about the forwarded trademark and related references Filing the application Form TM-13 [as stipulated in section 25(4) of the Indian Trade Marks Act of 1999] for restoration of one’s dead trademark after its removal from the register of trademarks, along with all prescribed fees

This was originally published in TWICE.

Selling Smart Devices Takes Some Smarts

The Internet of Things (IoT) has created a slew of slick products, but there have also been many failures: connected devices that people just aren’t using.

We call this the Abandonment of Things, the land where connected devices go to die.

Several factors drive the Abandonment of Things: a lack of a proper monetization strategy for connected services; failure to create a community around a smart device; even security issues and clunky backend processes.

If a company wants to avoid the digital scrap pile, it must have all the right parts working in sync.

Commerce Of Things

Companies are always looking to expand their user bases, but as that base grows, so does infrastructure costs to support the number of customers using that service. Think increased server capacity and people to manage the technology aspect of a subscription service. If the right infrastructure is not in place, profitability takes a hit.

It comes down to data collection and value. What data do companies collect and how do they use it? Where is the value? Take some of the popular connected health bands for example: their freemium models allow consumers to track food and exercise and then compare and compete with friends. On the other hand, their premium models cost around $100 annually and give consumers the option to compare themselves with strangers who are just like them.

Does the data revealed by the premium model — data about strangers rather than friends — provide enough value to convert 3-5 percent of the consumer base into paying customers? That’s the question every marketer must ask and answer.

Consumers Or Members?

With traditional, non-connected devices, the relationship between brands and consumers ends with the purchase. But with a smart device, the purchase is the beginning of that relationship. The Internet of Things is actually not about the thing. It’s about the service as well as the value provided by the service. A company must therefore consider more than the transaction, or the value of the product, or even the initial needs of the consumer. Companies must understand the value a consumer — or better yet, a member — gets from the service. An integral part of that value is the community consumers join when they subscribe to a service.

The new subscription generation requires companies to think of their consumer base as a membership base, which requires very different communication strategies. Transparency is key, both in terms of the solution offered and the financial aspect of the solution. Companies start to achieve success when they build out these relationships and consumers begin to take in new information, not just as marketing, but as an added value.

The Coming Regulatory Storm

Security is paramount in the era of the IoT. Striking the balance between value for consumers and protection of their data will be an ongoing challenge for marketers. One example that showcases the delicacy required in this new order is TVs that watch us — noting not just what you’re viewing, but who is in the room when the device is on. Even for those consumers who see great value in, for example, targeted commercials and programming, real questions revolve around how that data is collected and what companies do with it.

Consumer rights also change with every border crossing. Uber transactions are seamless in the U.S., but are more complicated in India. It’s not just about securing data, but also securing the complex payment processes inherent in a subscription-based, hyper-connected global economy.

How companies adapt to the regulatory environment is key to their success. One important thing to understand is that government is not necessarily proactive about regulating the IoT — regulations will most likely come after some company is caught misusing data. One bad apple can affect an entire industry, so companies need to be transparent and meticulous about data collection and how data is used to create value.

Avoid The Abandonment Of Things

The new world ushered in by the IoT is just dawning, and already the path forward is littered with abandoned things. A subscription-based economy demands flexibility, convenience and value. But those aren’t the only challenges your company faces when forging ahead. The right balance between monetization, transparent communications and security can create the environment your product needs to thrive.

What does it mean to abandon a trademark?

What is a presumption of abandonment of a trademark?

What is a partial opposition or partial cancellation?

What is abandonment of a trademark application?

When does clock start ticking for abandonment of US registrations based on foreign registrations under Section 44(e) or 66?

Trademark Rights

What Is a Dead Trademark?

How to Use an Abandoned Trademark

Trademark Abandonment Causes

Considerations Before Purchasing a Dead Trademark

How to Trademark an Abandoned Trademark

1. Visit the U.S. Patent and Trademark Office (USPTO) database online.

2. Find out when and why the trademark fell out of use.

3. Find out if the trademark is active in a state database.

4. Use the trademark.

5. Register the trademark.

6. Maintain your rights.

Standard of Proof for Abandonment

Non-Use

Rebuttal of Non-Use

Excusable Non-Use

Improper Use of a Mark Leading to a Loss of Trademark

How to Expressly Abandon Your Application for a Mark

What Constitutes Non-Use?

Intent to Resume Use of the Mark: Is Objective Evidence or Subjective Evidence Required?

Discontinued Use of a Mark

Intent to Resume Use

Abandonment by Acts or Omissions

What Constitutes Non-Use?

Intent to Resume Use of the Mark: Is Objective Evidence or Subjective Evidence Required?

Non-intentional acts of the owner

Non-use of a mark

What will happen if someone sues me for trademark infringement

How do I know whether I’m infringing?

Related Links

Sources

Abandonment happens

Reviving an abandoned trademark application

Avoiding Abandoned Trademark Applications

1. Abandonment / Non-Use

2. Lose Your Trademark Because it is Too Generic

3. Naked Licensing / Failure to Police

4. Misrepresentation and Fraud

What are indications of trademark abandonment?

How can trademark abandonment be avoided?

To avoid the trademark objection, you need to follow certain guidelines while selecting the proper trademark. For that purpose keep avoiding distinct words, well known marks, prohibited marks, deceptive language.

Important points to keep in mind to avoid objection

Conduct mark and Phonetic Search

Choose distinct words

Avoid well-known marks

Avoid prohibited and scandalous marks

Avoid deceptive and offensive language

Do not use existing marks

Do not imitate similar marks

Reply to trademark objection

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How to Prevent Patient Abandonment

Why would someone oppose your trademark application?

What is an extension of time to oppose?

Who is the potential opposer?

TTAB trademark opposition vs. trademark lawsuit: What are the differences?

How much does a TTAB trademark opposition defense cost?

What are first steps in defending against a trademark opposition?

What early settlement options might be available?

Any counterclaims to consider against opposer?

What if the applicant (defendant) fails to file an answer to the opposition?

What are the common reasons behind the abandonment of a trademark ?

Failure to Satisfy the Trademark Examiner/Registrar

Express Abandonment

Failure to Trademark Renewal

Failure to Monitor and ‘Genericide’

How to Claim or Restore a Dead Trademark ?

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