Trademark abandonment occurs when you stop using your mark without intending to resume use or allow it to become a product name or lose its significance as a trademark, including through uncontrolled licensing. Missing required filings can separately result in the loss of federal registration, which provides optional but significantly expanded trademark protections. Continued use, controlled licensing, brand management, and timely filings help you avoid a loss of trademark rights.
Jones IP Law helps clients ranging from solo business owners to Fortune 500 companies protect trademarks throughout their life cycles. Michael Jones can evaluate use, prepare United States Patent and Trademark Office (USPTO) filings, structure licenses, and address threats to your rights.
How Do Trademark Rights Work?
When you use a name, logo, slogan, or other mark with your business, and customers begin to identify that mark with your business, that connection can create trademark protection. Your rights continue while you use the mark, and customers recognize it as identifying the source of your offerings. Federal registration adds nationwide protections.
How Does Trademark Abandonment Occur?
You can abandon a mark when you stop using it and do not intend to resume use. Your actions or inaction can also cause customers to understand the mark as a product name or stop recognizing it as identifying your business. You can also lose a federal registration by failing to make required USPTO filings.
How Does Stopping Use Lead to Trademark Abandonment?
Your trademark rights arise from using the mark to identify the goods you sell or services you provide. When you stop selling those goods or providing those services under the mark, that use ends.
Trademark abandonment due to nonuse occurs when you stop selling goods or providing services under the mark without intending to resume doing so. Three consecutive years of nonuse create a presumption that you abandoned the mark. Nonuse for less than three years can also support abandonment of a trademark if you do not intend to resume use.
How Can a Mark Stop Functioning as a Trademark?
A mark may stop functioning as a trademark when it loses the meaning that allows trademark law to protect it. This can occur when customers begin to understand the mark as the common name of a product or service. It can then lose trademark protection through genericide.
Licensing can create a different path to the same loss of meaning. When you authorize another business to use your mark and allow licensees to determine quality without your supervision, the mark may stop representing goods or services from a consistent source, which can result in abandonment.
How Do You Lose a Federal Trademark Registration?
The USPTO requires periodic filings to keep a federal registration active. You generally must confirm continued use between the fifth and sixth anniversaries of registration, file a combined declaration of use and renewal between the ninth and tenth anniversaries, and make the same combined filing during each successive 10-year period.
If you do not complete a required filing within its ordinary period or within its six-month grace period, the USPTO will cancel the registration or allow it to expire.
How Can You Avoid Losing Trademark Rights?
Customers encounter your mark through your sales, licensees, marketing, and other business uses. Managing those encounters helps customers continue to recognize the mark as the identifier for goods or services associated with your business. Maintaining your registration keeps federal registration protections active over time.
Continue and Document Your Use
For products, use the mark on goods, packaging, labels, or sales displays. For services, advertise under the mark while continuing to provide them. Keep dated packaging, advertisements, website pages, invoices, and sales records that document your use.
Control How Licensees Use Your Mark
You may license your mark so that another business can provide goods or services under your brand. Because customers associate those offerings with your business, establish quality requirements and confirm that each licensee follows them.
Allowing licensees to control quality without your supervision can break the connection between the mark and your business. A court may treat such uncontrolled licensing as abandonment if it causes the mark to lose its significance as a source identifier for your goods or services.
Use Your Mark as a Brand Name
Your packaging and marketing teach customers to recognize your brand. Pair the mark with the ordinary product or service name and ask employees, advertisers, distributors, and licensees to follow the same practice.
You can use ® when you display a federally registered mark with covered goods or services. You may use ™ or SM with a mark that does not have federal registration.
Monitor and Address Harmful Uses
What happens if you don’t enforce your trademark? The effect of delayed or absent enforcement depends on the use. If you know that a particular business uses a conflicting mark and you allow that use to continue, your delay may limit the claims or remedies you can pursue against that business or weaken your ability to challenge that particular use.
To protect your enforcement position, monitor similar marks on related offerings, counterfeits, and uses that treat your mark as a product name. Your response may include contacting a business, requesting removal from the marketplace, opposing a trademark application, or pursuing a legal claim. The appropriate response depends on the circumstances.
Maintain Your Federal Registration
You generally must confirm continued use between the fifth and sixth anniversaries of registration. You must renew and confirm continued use between the ninth and tenth anniversaries and during each successive 10-year period.
When preparing a filing, confirm that you still use the mark for every listed good or service and remove discontinued items. If circumstances beyond your control temporarily prevent use, you may qualify to maintain the registration under the excusable nonuse exception.
Protect Your Trademark with Jones IP Law
Keeping your trademark requires coordinating your use, licensees, marketplace responses, and USPTO filings. I can help you manage those responsibilities as your brand develops. Drawing on experience advising businesses of different sizes, I can build a strategy around how you use and expand your mark. Contact the Brooklyn office of Jones IP Law to discuss keeping your trademark and registration active.
Frequently Asked Questions
What Is Trademark Abandonment?
Trademark abandonment occurs when you stop using your mark without intending to resume use or when your conduct causes the mark to become generic or otherwise lose its significance as a trademark.
What Is the 5-Year Rule for Trademarks?
The five-year point requires you to confirm continued use between the fifth and sixth anniversaries of federal registration. Separately, three consecutive years of nonuse create a presumption of abandonment.
Can You Lose a Trademark If You Don’t Use It?
Yes. You can lose trademark rights if you discontinue use without intending to resume.
What Is the Duty to Police a Trademark?
The duty to police a trademark means monitoring uses that may confuse customers or alter what your mark means to them. Trademark owners are responsible for enforcing their trademark rights, but failing to challenge every potentially infringing use does not automatically result in abandonment.
What Is Trademark Genericide and How Do You Prevent It?
Trademark genericide occurs when customers come to understand a brand as the common name for a product or service. Pair your mark with a product or service term, teach employees and licensees proper use, and correct uses that blur that distinction to help prevent it.
Legal References Used to Inform This Page
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