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Strategies for Claiming an Abandoned Trademark

By John DiGiacomo

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.

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