Photo Credit: O Palsson

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. 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 the abandonment.

Trademark Abandonment: The Complete Legal Landscape

Trademark rights in the United States are use-based. Unlike patent rights, which are granted for a defined period regardless of commercial exploitation, trademark rights exist only as long as the mark is in use in commerce. This foundational principle means that abandonment is an ever-present risk for trademark owners who fail to actively use and maintain their marks.

The Statutory Framework for Abandonment

Under the Lanham Act, 15 U.S.C. §1127, a trademark is deemed abandoned when either of the following occurs:

• Discontinuation of use with intent not to resume: Use has been discontinued, and there is no intent to resume use in the reasonably foreseeable future. This is the classic abandonment scenario. The statute provides that non-use for three consecutive years constitutes prima facie evidence of abandonment—meaning the burden shifts to the mark owner to rebut the presumption.
• Loss of distinctiveness: The mark has become the generic term for the product or service it identifies, such that it no longer functions as a source identifier. This is also called “genericide.”

Intent to Resume: How Courts Evaluate It

The “intent to resume” element of abandonment is highly fact-specific. Courts evaluate many types of evidence when determining whether a trademark owner intended to resume use after a period of non-use:

• Business plans or internal documents discussing resumption of use;
• Efforts to license or assign the mark, which may indicate continued intent to exploit it;
• Financial difficulties or business restructuring that explains a temporary gap in use;
• Maintenance of trademark registrations and payment of renewal fees, which suggests some intent to preserve the mark;
• Market conditions that made resumption commercially impractical.

Vague intent is not enough. The Supreme Court addressed this issue in Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989), where the court held that the intent to resume must be “reasonably in the foreseeable future.” CBS’s stated plans to eventually revive the Amos ‘n’ Andy franchise were insufficient to defeat an abandonment finding where there was no concrete plan and decades had passed since commercial use.

Genericide: When Marks Become Generic

A mark becomes generic when the consuming public comes to use the term as the common name for the product category rather than as an identifier of source. Once a mark becomes generic, it loses trademark protection entirely because competitors have a right to use generic terms. Famous examples include:

• Aspirin: Once a registered trademark of Bayer AG, “aspirin” became generic in the United States after widespread public use of the term to refer to acetylsalicylic acid generally. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
• Escalator: Originally a registered trademark of the Otis Elevator Company, declared generic in Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950).
• Thermos: Found generic by the Second Circuit in King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963).

Marks at risk of genericide today include brands that have become so dominant in their product categories that the public uses them as nouns or verbs: “Google something,” “Photoshop an image,” “Uber to the airport.” Google has aggressively policed the use of “Google” as a verb precisely because of genericide risk, and the Ninth Circuit considered the issue in Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017).

Other Ways to Lose Trademark Rights

Beyond non-use and genericide, trademark rights can be lost through:

• Naked licensing: Licensing the mark without retaining quality control over the licensee’s goods or services. Courts have found that naked licensing severs the connection between the mark and the source of the goods, causing the mark to lose its meaning and thus its trademark function. See Barcamerica Int’l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002).
• Improper assignment: Assigning a trademark without the accompanying goodwill—an “assignment in gross”—is invalid under the Lanham Act. 15 U.S.C. §1060. A valid trademark assignment must include the goodwill of the business associated with the mark. An assignment in gross results in the assignee acquiring no rights because the purported assignment transferred a mark whose meaning has been severed from any source of goods or services.
• Failure to maintain USPTO registration: Federal trademark registrations must be maintained through timely filings. Between the fifth and sixth years after registration, a Section 8 Declaration of Continued Use must be filed. Section 9 Renewal Applications are due every ten years. Failure to file these maintenance documents results in cancellation of the registration, which does not eliminate common law rights but eliminates the significant advantages of federal registration.

Protecting Against Abandonment

Trademark owners should take the following steps to protect against abandonment and preserve their rights:

• Use the mark consistently in commerce. Continuous, uninterrupted commercial use is the foundation of trademark rights. Document use through dated records, invoices, advertising materials, and photographs of goods bearing the mark.
• File maintenance documents on time. Calendar USPTO filing deadlines and treat them as non-negotiable. Missing a Section 8 or Section 9 filing date can be corrected during a grace period, but abandonment of registration creates complications and expenses.
• Control quality in trademark licenses. Every license agreement must include meaningful quality control provisions, and those provisions must be exercised in practice.
• Educate the public about proper trademark use. For well-known marks, policing improper usage—including use of the mark as a generic term—is an affirmative responsibility.

Reviving an Abandoned Trademark

If you have abandoned a federal trademark registration—either intentionally or through inadvertence—you have several options. First, if the registration was cancelled due to failure to file maintenance documents, the USPTO does not provide a mechanism to reinstate it. Instead, you must file a new application and go through the full prosecution process. If no one else has registered the same or a confusingly similar mark in the interim, and if you still have common law rights based on continued use, you may be able to re-register and claim a priority date based on your original use in commerce.

Second, if a third party has registered the same or a similar mark during your period of non-use, reclaiming priority is significantly more difficult. You will need to assess whether you have continuous, unbroken use of the mark predating the third party’s registration date—a fact-intensive inquiry that may require extensive documentation of historical use. Trademark opposition and cancellation proceedings before the USPTO’s Trademark Trial and Appeal Board are the primary vehicles for challenging a competing registration.

Prevention is far less costly than revival. Proactive portfolio management—tracking renewal deadlines, documenting use, and monitoring third-party registrations—is the most reliable way to preserve trademark rights over the long term.

If you have questions about protecting your trademark from abandonment or are involved in an abandonment dispute, contact Revision Legal’s trademark attorneys at 855-473-8474.