A trademark can (theoretically) last forever, as long as the mark continues to be used in conjunction with the sale of a good/service in interstate commerce. But if a trademark holder no longer uses the trademark, or fails to enforce his/her trademark rights, he may lose his trademark rights.
TRADEMARK FUNDAMENTALS
A Trademark’s ultimate purpose is to serve as a source identifier; when a consumer sees a name/logo/slogan tethered to a good or service, the consumer immediately understands the source-company which is selling that good or service. Trademarks MUST be sufficiently distinct and serve as a branding anchor for the company, which produces the good or provides the designated service. If the Trademark at any point fails to effectively identify the source of the good/service, it is no longer a trademark and may very well be subject to Abandonment.
PRE-REGISTRATION TRADEMARK ABANDONMENT
TRADEMARK ABANDONMENT BY NON-RESPONSE TO A USPTO OFFICE ACTION
Perhaps one of the most common instances of Pre-Registration trademark abandonment occurs in the context of a failure to respond to a trademark office action. Indeed, in the event that the USPTO examining attorney in charge of the application drafts an office action, the applicant must provide a complete response to the office action within the designated six-month time frame. The Office Action will either contain a procedural or substantive objection to a defect with the trademark application and will outline what, if anything, can be done to remedy it. The trademark applicant will then have six months from the time of the issuance of the trademark office action to provide a complete response to the issues raised in the office action. If the trademark applicant does not respond, or respond to the full satisfaction of the examining attorney, the mark will go abandoned. 15 U.S.C. §1062(b)
PARTIAL TRADEMARK ABANDONMENT
Trademark applications that contain more than one Class of Goods/Services may be rejected for some of the classes but not all of them. Here, the examining attorney may, for example, issue a Likelihood of Confusion rejection for Class 001 and 002 but find no defects for Class 003. If the trademark applicant were to fail to respond to the Likelihood of Confusion issue raised in the office action, there would be Partial Abandonment of Classes 001 and 002, BUT CL 003, which did not have any issues, would proceed to registration. Critically, the applicant must be absolutely certain that the office action is actually only limited to (in this example) CL 001 and 002 because if he/she doesn’t respond and CL 003 has even a minor issue, the entire application will go abandoned. Still, as a last recourse, if the failure to respond to the partial refusal was accidental, the applicant will have the chance to file a petition to revive within two months of the issuance of the USPTO and hopefully resurrect the application TMEP 718.02(a).
EXPRESS ABANDONMENT OF A TRADEMARK APPLICATION
Prior to registration, a trademark holder may Expressly Abandon the trademark application by submitting a written request for abandonment and either signing it him/herself or having an individual with legal authority (a trademark attorney) sign and submit the request. To file the abandonment form, simply proceed to TEAS and process the form electronically. 37 C.F.R. §2.135
Why might a trademark applicant abandon his/her application? Typically, Express Trademark Abandonment is most often the result of an external, settlement agreement reached between the applicant and an aggrieved party who jointly decide that the abandonment of the application is fair and equitable in return for XYZ.
TRADEMARK ABANDONMENT OF REGISTERED TRADEMARKS
We’ve now covered the various Abandonment scenarios that may occur between the time the TM Application was filed and registered with the USPTO. Now, let’s consider what happens after the trademark has been registered.
Contrary to popular belief, trademark rights, unlike patent rights, do not have a set time limit. Instead, a trademark can (theoretically) last forever, as long as the mark continues to be used in conjunction with the sale of a good/service in interstate commerce. But if a trademark holder no longer uses the trademark, or fails to enforce his/her trademark rights, he may lose his trademark rights. Thus, there are two meta-paths to trademark abandonment, which subsume all of the forthcoming sub-categories: Non-Use and Non-Enforcement.
NON-USE OF A TRADEMARK
The United States Patent and Trademark Office (USPTO) cares above all else that the trademark holder continues to use the trademark in interstate commerce. This is actually quite sensible – if the USPTO issues a trademark to person A, it is by definition prohibiting person B from using that Trademark. Such a prohibition is very serious indeed and to this end, the USPTO requires trademark holders to renew their trademarks according to statutorily defined dates. Trademark holders are required to submit a statement of use between the 5th and 6th year after the registration and subsequently, renew the trademark every 10 years after the registration date.
Furthermore, the USPTO may presume that the trademark owner has abandoned the trademark if it has not been in use for a period of three consecutive years AND the trademark owner has not taken any steps to resume the use of the trademark. TMEP 1613.11
On the defensive end, for those trademark holders who find themselves in the unenviable situation of having a trademark cancellation proceeding brought against them on the basis of Non-Use, it is critical to marshal forth evidence, which shows continuous use in interstate commerce. If you don’t want to lose your trademark – Use it.
NON-ENFORCEMENT OF A TRADEMARK
Of course, merely using one’s trademark (even continuously) in commerce is insufficient to guarantee the safety of one’s trademark – trademark holders must protect and enforce their proprietary rights to the trademark, lest those once-distinctive marks become generic and non-protectable (the extent to which this is true is Jurisdiction dependent).
Now, the extent to which a trademark holder who observes the infringement of his mark is required to prosecute trademark infringers is not entirely obvious and different courts have varied views on the rigors of the prosecutorial duties of the senior trademark holder. Depending on which court is reviewing the trademark holder’s case, not prosecuting infringement may result in full or partial abandonment of the trademark rights or under more lenient doctrinal positions, may only mitigate the strength of the trademark but not eliminate all trademark rights (abandonment).
YOUR TRADEMARK HAS BEEN APPROVED: NOW WHAT?
The USPTO is a firm believer in the, “If you don’t use it, you lose it” philosophy when it comes to trademark applications. Thus, while your trademark can in theory last for eternity, it can also retire early if the appropriate steps are not taken. Specifically, an applicant’s trademark is only valid for as long as it is in use with the goods/services listed in the trademark application. After the first 5 years of the trademark’s registration, but before the beginning of the 6th year, the trademark holder must “renew” the mark. This is again true during the 9th year of the trademark’s registration and again, every 10th year that follows.
Similarly, a trademark holder is responsible for ensuring that no unauthorized party uses the mark. If unauthorized parties do use the mark, it risks becoming generic and subject to cancelation.
WHEN DOES FAILURE TO PROSECUTE TRADEMARK INFRINGEMENT LEAD TO ABANDONMENT?
Fundamentally, Courts have adopted 3 main doctrinal models for dealing with the ramifications of failing to police trademark infringement:
- Under the first position, the failure to prosecute trademark infringement does not have any bearing on the rights of the senior trademark holder and should not cause trademark abandonment. Simply, it would be unreasonable to expect a trademark holder to undertake the immense financial burden of prosecuting every infringer illicitly using his/her mark. Federal courts in New York, California, Florida and other states (along with the Trademark Trial and Appeal Board) seem to have historically favored this model.
- The second position holds that the failure to actively prosecute trademark infringement may render the trademark Generic. The idea here is that if when multiple, or even a single, competitor uses the trademark of another, the use of that trademark, will by design delude the distinctiveness of the mark and cause it to be generic. New York Courts and the TTAB have precedential decisions, which support this position.
- The third position holds that if the senior trademark holder does not target infringers, abandonment is not a foregone conclusion BUT the trademark will be weakened as a result of its uninhibited use by others. Thus, trademark abandonment is not the concern in as much as a progressively weakened stance of enforceability. Federal courts including the 2nd and 5th circuits in addition to the TTAB have precedential decisions, which support this position.
TRADEMARK ABANDONMENT – USE IT OR LOSE IT
Trademark holders interested in maintaining their trademark rights must strive to actively 1. Continuously use their trademarks in commerce and enforce their trademark rights against infringers. This is not to say that a trademark holder needs to stalk and pursue every instance of potential trademark infringement but if a pattern of indifference emerges to the impermissible, concurrent use of the trademark, the senior holder risks weakening or abandoning the trademark altogether.
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Registering your trademark correctly from the start is important. Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your idea. We’re here to help.
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