When is a trademark deemed abandoned and once it is abandoned can it be "unabandoned" by resuming use in commerce?

Asked 12 months ago - Hopkins, MN

If a company ceased using a trademark (stopped selling the product the trademark is used on) for years when is it abandoned and can that company undo this abandonment by starting to sell the product again? I'm just speaking in terms of the trademark registry, principle or supplementary not common law. Thanks!

Attorney answers (3)

  1. Daniel Nathan Ballard

    Contributor Level 20


    Lawyers agree

    Answered . If branded goods are not sold for three years then the law presumes that the brand-identifier [the trademark] no longer serves to brand that good -- and so the former user of the mark cannot enforce the mark, which is then free to be used by others.

    However, because the law strongly disfavors the abandonment of trademark rights, it takes very little effort to prevent the abandonment. Perhaps simply advertising the branded goods suffices [even though no sales are made]. Each case is very fact specific. Your own trademark attorney should review your particular facts in private. Good luck.

    The above response is general information ONLY and is not legal advice, does not form an attorney-client... more
  2. Alexander H Butterman


    Contributor Level 13


    Lawyers agree

    Answered . Are you trying to hold onto trademark rights you once had, or merely trying to re-register a mark in which you claim to continue to maintain rights? You seem a little confused about how trademark law works in the U.S. and are not understanding the significance of the usage of a mark and common law rights. If you are concerned about maintaining rights to a mark that someone else is threatening, you promptly need to consult an attorney or you will surely jeopardize your rights in the mark.

    A trademark registration just reinforces and nationalizes trademark rights that you establish from use of the mark in U.S. Commerce. That registration lapses automatically if the necessary Section 8 Declaration of Continuing Use and its filing fee is not filed by each due date as well as the renewal due each 10th anniversary from the registration date. If a registration lapses, you can always file another application to register the mark again and claim all of the prior usage in the new registration. You could have trouble re-registering the mark because of an intervening filer or user of a similar mark or if the current examiner decides the registrability of your mark differently than the initial registration - those are the risks you face when allowing the registration to lapse.

    But you ultimately need to keep using the mark, and show clear intention to resume use if a period of non-use occurred, in order to maintain rights in the mark regardless if the mark is registered or not. If the third party is trying to obtain the mark on the basis that you abandoned the mark for non-use, they can do so based upon a presumption of abandonment if the mark has not been used for a period of 3+ years and evidence of your intent to have stopped using the mark without any intention to resume use.

    Petitions to cancel a registration require that you have rights in a mark that is jeopardized by the continuing registration of the respondent you petition. The grounds for petitioning a registration are also significantly limited if the registration is older than 5 years.

    Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C.... more
  3. Brian A Lincer

    Contributor Level 9


    Lawyers agree

    Answered . In order to keep a trademark active, you must submit continual filings evidencing that the trademark holder is using the trademark in commerce. The first filing must be made between the 5th and 6th year after registration. The second must be made between the 9th and 10th year after registration and then every 10 years after that. If you do not make these filings, the trademark will eventually be deemed abandoned. You can check the USPTO database to see if these filings were made. Hope that helps.

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