Under US trademark law, an owner of a trademark must actually USE the trademark in interstate commerce for the trademark to continue being valid. Failure to use a trademark is the hallmark of an abandoned trademark. The US trademark law, the Lanham Act, defines trademark abandonment to occur when “its use has been discontinued with intent not to resume such use.” Both elements must be established. Further, evidence of nonuse for three consecutive years is prima facie evidence of abandonment. That is, if a person or business can effectively prove that a trademark has not been used for three years, that will be sufficient to prove that the trademark has been abandoned. At that point, the abandoned trademark can be claimed by another. Here are some strategies for claiming an abandoned trademark.

Do Your Research

Before embarking on an effort to claim an abandoned trademark, research is essential. As you conduct the research, organize and collect the results. Most of the results can be used as evidence of abandonment.

• First, research who owns the trademark.
• Second, determine if the owner is still in business. Consider whether some new owner might have acquired rights to the trademark.
• Third, find out if the trademark is registered (including possible trademark registration at the state level). To claim a registered trademark, it will be necessary to have the registration canceled. Further, find out if the registration has been properly maintained. A trademark must be maintained with periodic filings with the US Patent & Trademark Office or the State-level trademark office. If the trademark registration has lapsed, that will be good evidence of abandonment.
• Fourth, research the various products and/or services with which the trademark has been used. All registered trademarks must be associated with at least one class of goods or services.
• Fifth, conduct extensive research on use of the trademark in commerce. Be sure to consider whether the trademark has been used in foreign markets. Document any time periods of nonuse. Ideally, the research will show at least three years of continuous nonuse.

Research Excusable Nonuse

There are some valid reasons that a trademark can still be valid even if there is nonuse. Under US trademark law, this is generally called “excusable nonuse.” Consider whether there are any grounds for excusable nonuse with respect to the trademark at issue.

Consider Buying or Licensing the Trademark

Depending on the results of the research, it might be possible to acquire the trademark from the owner or obtain a license to use the trademark. Sometimes, this option is less expensive than seeking to have the trademark canceled and then filing an application for registration.

Begin a Cancellation Proceeding and Prepare an Intent-to-Use Trademark Application

If the research demonstrates abandonment, the next step is to file a cancellation proceeding. This can be filed with the USPTO. Essentially, a complaint is filed along with all the collected evidence of abandonment. The owner of the trademark has an opportunity to respond and challenge the claim of abandonment. If the owner does not respond or cannot rebut the evidence of abandonment, the USPTO will cancel the registration of the trademark. At that point, the person or business seeking to claim the trademark can file an intent-to-use trademark application. If that is approved, then the abandoned trademark will have been successfully claimed and the new owner can begin using it. For more information, contact Revision Legal at 231-714-0100. Our litigation team has deep experience in trademark law,internet law and patent law.

Understanding Trademark Abandonment Under the Lanham Act

The Lanham Act, 15 U.S.C. § 1127, governs trademark abandonment. As noted, nonuse for three consecutive years creates a rebuttable presumption of abandonment. The trademark owner can rebut this presumption by demonstrating either that use resumed or that there was excusable nonuse. Courts have found excusable nonuse in a variety of circumstances, including force majeure events, government-imposed manufacturing restrictions, significant litigation that prevented use, and substantial business disruptions like fires or floods that made normal operations impossible.

Partial abandonment is also possible. A trademark registration covers goods and services identified in specific international classes. If the owner has abandoned use of the mark with respect to some — but not all — of the identified goods and services, cancellation can be sought for those specific classes while the registration survives for classes where use continues. This is an important nuance when a competitor wants to use the mark only in connection with goods or services the original owner has abandoned.

Cancellation Proceedings Before the TTAB

Cancellation of a registered trademark is decided by the Trademark Trial and Appeal Board (“TTAB”), an administrative tribunal within the USPTO. A cancellation proceeding is initiated by filing a petition for cancellation with the TTAB. The procedural framework is similar to civil litigation: the petitioner files a complaint, the respondent (the trademark owner) answers, and the parties conduct discovery, file pre-trial disclosures, and present evidence at trial through testimony deposition.

The petitioner has the burden of proving abandonment by a preponderance of the evidence. Evidence that is particularly compelling includes:

• Trademark monitoring reports showing no use of the mark in commerce for three or more years
• Lapsed maintenance filings with the USPTO — registered trademarks require Section 8 declarations of continued use, and failure to file these declarations results in cancellation by the USPTO itself
• Evidence that the registrant’s business has been dissolved or has ceased operations
• Internet searches, business directory searches, and marketplace surveys showing no presence of the mark in commerce
• Third-party declarations from industry participants confirming they have not seen the mark used

Common Law Rights and Unregistered Abandoned Trademarks

Not all trademarks are registered with the USPTO. Common law trademark rights arise from actual use in commerce without registration. Claiming an abandoned common law trademark is more straightforward procedurally — there is no cancellation proceeding because there is no registration to cancel. However, establishing that the common law mark has been abandoned requires the same showing: nonuse with intent not to resume.

The complication with common law marks is that their geographic scope is typically limited to the region where the mark was actually used. Before claiming a common law mark that the original owner has abandoned, research the geographic scope of the original owner’s use. If the original owner used the mark only in Michigan, a new user might be able to adopt the mark freely in other states while still facing potential conflict if they try to use it in Michigan.

Risks of Claiming an Abandoned Trademark

Claiming an abandoned trademark carries real risks that must be understood before committing resources to the effort:

• The original owner resurfaces — An owner who has temporarily ceased use may reassert trademark rights if use resumes before abandonment is fully established. The best protection is to have clear evidence of at least three years of continuous nonuse and to proceed expeditiously once that evidence is assembled.
• Residual goodwill and consumer confusion — Even if a mark is legally abandoned, consumers may still associate it with the original owner. Adopting a mark that carries negative associations or that consumers still identify with a defunct company may not serve your business interests.
• Conflicting third-party uses — Others may have been using the same mark regionally during the period of abandonment, creating pockets of conflicting rights that complicate nationwide use of the mark.

Working with a trademark attorney to navigate these risks before investing in an abandoned mark is essential. Contact the trademark lawyers at Revision Legal at 231-714-0100 for a strategy consultation.