What does it mean to abandon a trademark?
Trademarks differ from patents in at least one fundamental way. Trademarks require continuous usage. Otherwise, trademark rights can be lost. A renewal of a trademark registration, therefore, requires the owner to declare that the trademark has been and continues to be used on the goods and/or services identified in the registration. Acceptable evidence of current usage must also be submitted to maintain a trademark registration. Trademark abandonment, therefore, refers to the nonuse of a mark along with certain intentions of the trademark owner.
According to 15 USC 1127, a trademark is considered abandoned if “its use has been discontinued with intent not to resume such use.” The intent not to resume may be inferred from circumstances. Trademark abandonment, therefore, requires two elements:
- nonuse; and
- intent not to resume use.
Patents, on the other hand, need not be used in order to survive. Utility patents simply require maintenance fees to be paid at certain time periods following the grant date. Design patents have no maintenance fees. Patents, however, have limited terms with definite expiration dates. Trademark registrations can be renewed indefinitely as long as they are not abandoned.
What is a presumption of abandonment of a trademark?
Nonuse of a mark for three consecutive years creates a legal presumption that the mark has been abandoned. Legal presumptions relate to burdens of proof. So, if a presumption of abandonment has been established, the burden shifts to the trademark owner to show that the mark has been in use during the time period or that the owner has an intent to resume use.
For example, a trademark owner may try to provide evidence of special circumstances to show that nonuse of the mark was temporal, and that the owner has the intention to resume usage. An owner could also provide examples of limited use or other commercial efforts to show intent to resume use of the mark in the reasonably foreseeable future.
Can a cancellation claiming abandonment be filed against a registration over 5-years old?
Yes, trademark registrations older than five years may still be canceled on the basis of abandonment. Section 14 of the Lanham Act, 15 USC 1064, identifies grounds that may be used to cancel over 5-year old registrations, even against incontestable registrations.
What is a partial opposition or partial cancellation?
In a trademark registration that lists several goods or services, some of the items may still be in use. In such circumstances, it would be prudent to apply a more surgical approach by seeking to remove only non-used goods or services from the registration. Such a partial removal of certain goods/services might make sense if they form the basis for a likelihood of confusion refusal.
A partial cancellation action filed under Section 18 of the Trademark Act [15 USC 1068] must plead that the proposed restriction or modification to the registration will avoid likelihood of confusion [15 TBMP 309.03(d)]. Unlike a cancellation action due to abandonment brought under Section 14, a petitioner seeking partial cancellation can show merely nonuse without having to prove an intent not to resume. [See Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS (TTAB 2012)].
What is abandonment of a trademark application?
So far, we have been discussing the abandonment of trademark rights due to an owner’s failure to use the mark with an intent not to resume. That is to be distinguished from abandonment of a trademark application which results from the failure of an applicant to respond timely to certain deadlines. For example, failure to respond to an Office Action or to file a Statement of Use can result in abandonment of an application.
Abandoning a trademark application, however, does not necessarily mean that an owner has abandoned trademark rights. It is possible for an owner to continue using a trademark even if its application was abandoned.
When does the clock start ticking for abandonment of US registrations based on foreign registrations under Section 44(e) or Section 66 (Madrid)?
Foreign companies may register trademarks in the US without having to show use in commerce. In such cases, the time period for counting the three-year presumption of abandonment begins on the registration date.