A trademark is abandoned when its owner stops using it with no intent to resume use, or when the owner’s conduct causes the mark to lose its meaning as a brand. Under federal law, three consecutive years of nonuse is prima facie evidence of abandonment. Once a mark is abandoned, the former owner loses its rights, others may be free to adopt the mark, and a federal registration can be cancelled at any time.
Photo Credit: O Palsson
Because U.S. trademark rights come from use, not from paperwork, abandonment is a risk for every brand owner: the business that shelves a product line, the company that licenses its name without oversight, and the owner who lets a well-known mark slide into everyday generic language. Here is what the law says and how to protect yourself.
The Legal Definition of Abandonment
The Lanham Act defines abandonment in 15 U.S.C. § 1127. A mark is deemed abandoned if either of two things happens:
- Nonuse with intent not to resume: “When its use has been discontinued with intent not to resume such use.” The statute adds that intent not to resume may be inferred from circumstances, and that nonuse for three consecutive years is prima facie evidence of abandonment.
- Loss of significance as a mark: When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services or otherwise to lose its significance as a mark.
The first path covers owners who simply stop using a mark. The second covers owners who keep using the mark but allow it to stop functioning as a source identifier, through genericide, uncontrolled licensing, or similar conduct.
Abandonment Through Nonuse
Discontinued Use and Intent Not to Resume
A temporary pause does not automatically forfeit your rights. Seasonal products, supply-chain interruptions, and product redesigns happen. What matters is whether use stopped and whether the owner intended to resume it. Because intent can be inferred from circumstances, courts look at what the owner actually did during the gap, not just what the owner says later.
The use must also be real. The Lanham Act defines “use in commerce” as bona fide use of a mark in the ordinary course of trade, not use made merely to reserve a right in the mark. Occasional token sales designed only to keep a registration alive are unlikely to defeat an abandonment claim.
The Three-Year Presumption
Once a challenger shows three consecutive years of nonuse, the law presumes abandonment. The burden of producing evidence then shifts to the owner, who must show an intent to resume use. In TTAB cancellation proceedings, the party claiming abandonment bears the ultimate burden of proving it by a preponderance of the evidence. On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000).
A vague hope of someday reviving a brand is not enough. In Silverman v. CBS Inc., 870 F.2d 40 (2d Cir. 1989), the Second Circuit held that the owner must intend to resume use within the reasonably foreseeable future. CBS had not used the AMOS ‘N’ ANDY marks for more than two decades, and its general interest in possibly using them again did not preserve its rights.
Evidence that can help an owner rebut the presumption includes concrete business plans, product development or manufacturing records, licensing negotiations, and documented reasons for the interruption. The more specific and contemporaneous the evidence, the stronger the rebuttal.
Abandonment Through Loss of Significance
Genericide
A mark becomes generic when the public comes to understand it as the common name for a type of product rather than as a brand. Once that happens, trademark protection is lost because competitors have a right to use the ordinary name of the goods. Classic examples include ASPIRIN, found generic in Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921), and THERMOS, found generic in King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963).
Popularity alone does not make a mark generic. In Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017), the Ninth Circuit held that using a trademark as a verb does not automatically make it generic. The question is whether the primary significance of the term to the relevant public is the name of a type of product or a particular source. For more on this risk, see our article on trademark genericide.
Naked Licensing
A trademark signals that goods or services come from a consistent source. If you license your mark without controlling the quality of what licensees sell, the mark can stop meaning anything, and a court can find that you abandoned it. In Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002), the owner of the DA VINCI wine mark lost its rights because it exercised no meaningful quality control over its licensee. Every license should include quality control provisions, and the licensor must actually enforce them. Our trademark licensing attorneys draft agreements with this risk in mind.
Assignments Without Goodwill
Under 15 U.S.C. § 1060, a registered mark is assignable with the goodwill of the business in which the mark is used. A transfer of the bare mark, separated from the business and goodwill it represents (an “assignment in gross”), can leave the buyer with an invalid claim and invite an abandonment challenge.
Abandoned Registrations vs. Abandoned Rights
The word “abandoned” also appears in USPTO records, and it does not always mean the same thing. An application marked abandoned usually means the applicant missed a deadline, such as the response to an office action. A registration can also be cancelled if the owner fails to file the required maintenance documents. Under 15 U.S.C. § 1058, the Section 8 declaration of use is due in the year before the sixth anniversary of registration and in the year before each ten-year anniversary, with a six-month grace period.
Losing a registration for missed paperwork does not by itself end common law rights in a mark that is still in use, but it does cost the significant benefits of federal registration. Conversely, if a registered mark is not in use when a Section 8 declaration is due, the owner must show that the nonuse is due to special circumstances that excuse it and is not due to any intention to abandon the mark. Learn more in our guide to what an abandoned trademark status means.
How Abandonment Claims Are Raised
Abandonment typically comes up in three settings:
- TTAB cancellation proceedings: Under 15 U.S.C. § 1064(3), a petition to cancel a registration on the ground that the mark has been abandoned or has become generic may be filed at any time, even after the registration is more than five years old.
- Infringement litigation: A defendant accused of infringement may argue that the plaintiff abandoned the mark, so there are no rights left to enforce.
- Clearing a new brand: A business that finds an old registration blocking its application may investigate whether the mark is still in use and challenge it if not.
The Trademark Modernization Act of 2020 added two faster, ex parte tools that are related to, but different from, abandonment. An expungement proceeding challenges goods or services on which a registered mark has never been used in commerce and can be requested between three and ten years after registration. A reexamination proceeding challenges whether the mark was in use on the relevant date required for proof of use and must be requested within the first five years after registration. The USPTO fee for either petition is $400 per class. See our overview of trademark expungement and reexamination.
Protecting Your Trademark From Abandonment
Preventing abandonment is far less costly than litigating it. Practical steps include:
- Use the mark continuously and document it. Keep dated invoices, labels, website captures, and advertising that show the mark in use for each product or service.
- Plan for gaps. If you must pause a product line, record the reasons and your plans to resume, and keep those plans concrete.
- Control quality in every license. Put inspection and approval rights in writing and exercise them.
- Use the mark as a brand, not a noun. Pair the mark with the generic name of the product and correct generic use in your own marketing.
- Calendar maintenance deadlines. File Section 8 and renewal documents on time and delete goods or services you no longer offer.
- Watch the marketplace. Trademark monitoring helps you spot third parties who may be treating your mark as available.
Protect the Trademark Rights You Have Built
Trademark rights last only as long as you keep using and controlling your mark. A shelved product line, an informal license, or a missed filing can put years of brand investment at risk, while an old, unused registration owned by someone else may be the key to clearing your own brand.
Whether you need to protect a mark from an abandonment challenge or evaluate whether a competing registration has been abandoned, the trademark attorneys at Revision Legal can assess your position and recommend a practical strategy. Contact us through the form on this page or call (855) 473-8474. Northern Michigan brand owners can also meet with our Traverse City trademark attorneys.
