How do you recognize an iPhone? Or a MacBook?
The half-bitten apple, Apple’s trademark.
A trademark is one of the most important assets for a brand. It helps the brand to advertise its products/services to the audience and helps the audience recognize and remember a brand. Only a trademark can help a brand/company to reach millions and build a loyal customer base.
This is why brands invest hectic hours and valuable money into getting their trademark registered. The process of trademark registration is not only long but also complicated.
Even after getting a registered trademark, some companies end up abandoning their trademark, knowingly or unknowingly. In this blog, we will discover what is an abandoned trademark.
What Is An Abandoned Trademark?
A trademark that was once registered with USPTO (or another country’s trademark registry office) but:
- Was not used for a long period of time (3 years in the USA), or
- Was used improperly, i.e., against the trademark law (Lanham Act)
- Willfully/explicitly abandoned by the owner
Abandoned Trademark Under Lanham Act
Section 45 of the Lanham Act considers a trademark to be abandoned if “the owner has discontinued its with an intention to not resume such use.” The prima facie evidence for non-use under Lanham Act is non-use of the trademark for 3 consecutive years. Therefore, mere registration of a trademark is not enough to reserve trademark rights, the owner of the mark must bona fide make use of the trademark. Otherwise, anyone can challenge the use of the mark and request for cancellation of its registration with USPTO.
Under Lanham Act, a trademark is abandoned if these 3 requirements are met:
- The trademark owner discontinued its use.
- The trademark owner has no intent to continue using the trademark.
- The trademark owner had no intent to continue using the trademark when he/she discontinued the use.
There have been many cases where TTAB has declared the trademarks abandoned. E.g. Ross Bicycles LLC v. Century Sports, Inc., Cancellation No. 92067406, 2020 TTAB LEXIS 128 (T.T.A.B. Mar. 27, 2020).
How A Trademark Is Abandoned?
A trademark can become an abandoned/dead mark in many ways. Such as:
- Non-Use
This is the most common way companies abandon their trademark. A trademark (whether registered or unregistered) must be used in public in order to establish the trademark rights. A trademark can be used by:
- Advertisements and marketing campaigns
- Affixing on products, company’s containers, vehicles, labels, etc.
- Featuring on official documents
After 3 years of non-use, third parties can start using or registering the trademark.
- Genericism aka Genericide
When the trademark becomes too generic or common, i.e., the trademark is now merely a descriptive name of the product/service and even the secondary meaning can’t justify the registration of that generic word or phrase. TTAB determines whether the mark is generic or not based on the primary significance of the registered trademark.
- Failure To Enforce Trademark Rights
When the trademark owner fails to prevent trademark infringement or trademark dilution, even then the trademark can be considered abandoned.
- Excessive Trademark Assignment
USPTO allows legal trademark licensing, however, the mark owner may end up losing the mark if the owner fails to maintain the trademark rights and control on the mark.