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Many believe that once a trademark is established and properly registered, the legal protections provided by US trademark law will last indefinitely. However, this is a mistaken belief since there are several ways in which trademark rights can be lost. Here is what you should know and how to ensure that you do not lose your trademark rights.
Four common ways that trademark rights can be lost
The essence of a trademark is its use in commerce so that consumers associate the trademark with a unique product or service. As such, the first way in which trademark rights can be lost is through unexcused non-use. Generally, this is called trademark abandonment. Under the Lanham Act, a trademark will be considered abandoned if the trademark is not used in commerce for three consecutive years and it is shown that there is no intent to resume use. To avoid losing your trademark on this basis, make sure the trademark is being used (and used as it is registered, not as a variation).
Another method of losing trademark rights is failure to renew its registration. Trademarks are registered with the US Patent and Trademark Office (“USPTO”). But registration must be renewed between the fifth and sixth years after the initial registration, then must be renewed again at the 10-year mark and every 10 years thereafter. Failure to renew your trademark registration will result in cancellation of the registration. If the trademark is still being used, the trademark might still have common law trademark protection. But it is risky to rely on the common law. To avoid losing your trademark on this basis, make sure you file with the USPTO for renewal as required.
Another method of losing a trademark is by failing to monitor the marketplace for infringing uses causing your trademark to either lose its distinctiveness or become a generic word for a type of product or service (rather than a mark identified with a specific product/manufacturer). The word “Zipper” is a famous example of a former trademark that came to be used so commonly by consumers that the word lost its status as a trademark. This fate can be avoided by policing use of the trademark in the marketplace. As one example, demand letters should be sent to print and online media if use of the trademark does not include the circle-R designation or does not otherwise indicate that the word/phrase is trademarked.
A fourth method of losing trademark rights is by improper licensing or failing to supervise trademark licensees. If a trademark is licensed, there must be adequate supervision over its use. Essentially, loss of trademark rights occurs because uncontrolled use of a trademark by a licensee can dilute the trademark to such an extent that it no longer functions as a trademark. For example, if a licensee uses the trademark on every product or service that they provide, then the trademark loses its association with the original product/service. To avoid this, you must have solid and enforceable written license agreements. Further, you must be prepared to litigate if a licensee violates the license agreement. Further, you must avoid any sort of implied or permissive license. Improper use by an implied licensee can damage a trademark just as much as improper use by a formal licensee.
If you have questions about creating and registering a trademark or litigating a trademark dispute, contact the trademark lawyers at Revision Legal at 231-714-0100.
Trademark abandonment under Section 45 of the Lanham Act, 15 U.S.C. § 1127, is established by showing non-use plus intent not to resume use. The statute creates a rebuttable presumption of abandonment after three consecutive years of non-use. However, courts have found abandonment in periods shorter than three years when circumstantial evidence clearly establishes an intent not to resume use.
The ‘use in commerce’ standard under the Lanham Act requires genuine commercial use—not merely token or sporadic use designed to preserve trademark rights. The Supreme Court addressed token use in its pre-ITU (intent-to-use application) era and has consistently required that use be bona fide. If a trademark owner reduces use of the mark to token levels solely to preserve rights, a challenger may still successfully establish abandonment by showing that the use does not constitute genuine commercial exploitation of the mark.
Trademark registrations require active maintenance through a series of mandatory filings with the USPTO. Missing these deadlines results in cancellation of the registration, which is not automatically revived even if the trademark is still in use. The critical filing windows are:
Achieving incontestable status through a Section 15 Declaration, available after five years of continuous use following registration, is one of the most significant steps a trademark owner can take to strengthen their rights. Under 15 U.S.C. § 1115(b), an incontestable trademark registration is ‘conclusive evidence’ of the validity of the registered mark and the registrant’s exclusive right to use it in commerce. This means that many otherwise-available defenses to infringement—including claims that the mark is merely descriptive—are no longer available to challengers.
The Supreme Court in Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985), held that an incontestable registration cannot be challenged on the grounds of mere descriptiveness. This is a powerful protection for trademark owners whose marks might otherwise be vulnerable to descriptiveness challenges. Trademark owners who have been using their marks for five or more years following registration and have not filed for incontestable status should do so as promptly as possible.
Trademark rights are lost not only through non-use but also through failure to police unauthorized use by third parties. A trademark owner who knows of infringing uses and fails to take action may be found to have acquiesced in those uses, potentially losing the right to enforce the mark against those specific infringers. The doctrine of laches can bar a trademark infringement claim if the trademark owner unreasonably delayed in bringing suit and the defendant was prejudiced by the delay.
Effective trademark policing involves regular monitoring of USPTO trademark application publications (to oppose conflicting applications before they register), internet searches for infringing uses, marketplace monitoring for counterfeit goods, and monitoring of domain name registrations that incorporate or imitate the trademark. A demand letter or, if necessary, opposition or infringement proceeding against infringers documents the trademark owner’s enforcement efforts and strengthens the mark’s distinctiveness over time.
Licensing a trademark without maintaining adequate quality control creates the risk of ‘naked licensing,’ which can result in complete loss of trademark rights. The legal principle is that a trademark functions as a guarantee of quality—when consumers see the trademark, they expect a certain level of quality associated with the trademark owner. If the trademark owner licenses the mark without supervising the quality of the licensee’s goods or services, the trademark ceases to serve its guarantee function and may be deemed abandoned. Courts have consistently held that naked licensing extinguishes trademark rights entirely. See Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002).
Trademark license agreements should include explicit quality control provisions: the right to inspect the licensee’s facilities and products; standards for the quality of goods or services bearing the mark; approval rights over advertising and promotional materials; and the right to terminate the license if quality standards are not maintained. The trademark attorneys at Revision Legal can draft comprehensive license agreements and advise on quality control programs that protect your trademark rights. Contact us today.
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