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You worked hard to get your business up and running, and may have spent years establishing your brand. But there may be times when you might abandon a trademark — purposely or inadvertently — or you may wish to use one that was once owned by another. There are two primary ways in which a trademark can be abandoned — through nonuse or by failing to move your USPTO application forward. Importantly, once a trademark is deemed “abandoned,” it no longer has the protective rights granted by the Lanham Act.
A trademark must be continuously used in commerce for you to retain your rights to it — if you fail to do so, the mark may be deemed abandoned. Otherwise, trademark protection can ultimately last indefinitely, as long as it is maintained.
Trademark abandonment occurs when the owner has not used the mark and has no intention to resume use. Abandonment can be inferred based on the circumstances surrounding the nonuse. If a mark has not been used for three years, this may be considered prima facie evidence of abandonment.
If you can demonstrate that you intend to resume use of the mark through advertising or distribution, you may be able to rebut the nonuse presumption. In addition, nonuse may be excused if you can show proof that you had no control over the circumstances leading to the nonuse.
Other common causes of trademark abandonment may include:
A trademark can also be abandoned before it has been registered. A USPTO application may be deemed abandoned if you did not file a response to an office action response, an Extension of Time, or a Statement of Use. In these cases, the USPTO will notify you that your application has been relinquished by sending a Notice of Abandonment. However, you may still have the option to revive your abandoned application.
In the event that you inadvertently abandoned your trademark application, you may be able to file a petition to revive it if certain conditions are met. When the USPTO sends a Notice of Abandonment, you only have two months from the date marked on the notice to respond. However, if you did not receive the notice, you have up to six months from the date of abandonment to file a petition. If you are outside the time frame to file a petition, you will need to begin the registration process over again.
When a trademark itself is abandoned, you could regain some of the protective rights it once had simply by beginning to use it again in commerce. But in doing so, you will only have limited protections and it can be much more difficult to assert your ownership in an infringement action. If you plan to resume using the mark and define your brand with it, you should strongly consider re-registering it with the USPTO.
With countless trademarks being filed year after year, it is becoming more difficult to register an original mark. In this case, you might consider trying to register a mark that has been abandoned. But even if another entity abandoned their trademark application, claiming the mark as your own may not be as easy as you would expect. Significantly, the other business might still have common law rights if they continue to use the mark.
It is also essential to be aware that there might also be a specific reason for the abandonment. Perhaps it was likely to be confused with another mark, or the application would have been rejected based on other grounds. It is crucial to keep this in mind when considering whether you want to move forward with registering an abandoned mark.
Nevertheless, if you wish to register an abandoned trademark, you will be required to file a new application and start the process from the beginning — it is not possible to simply pick up where the abandoned application left off.
If you are looking to register an abandoned trademark, a skilled trademark attorney can provide you with the counsel you need to make decisions that are in the best interests of your company. The attorneys at the Trademark Lawyer Law Firm, PLLC have extensive experience handling trademark matters and can guide you through the process of filing a petition to revive your mark or provide specifically tailored guidance for your company. Located in Ann Arbor, Michigan, we work with business owners nationwide and are dedicated to providing comprehensive representation. Contact us today for a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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