Trademark Abandonment:  Use ‘Em or Lose ‘Em

When it comes to trademarks, it really is “use ‘em or lose ‘em.”  Companies work hard to win the goodwill of their customers, and work to gain the recognition of their brand.  The company’s trademark is a key part of that branding and goodwill.  Some falsely believe that once they register the trademark then they own it forever.  But, that is not the case.  One way to lose the rights to your Trademark is to simply do nothing.  

Trademarks are associated with “use in commerce.”  Such use is needed to gain protection of the mark, whether or not you officially register it with the United States Patent and Trademark Office.  So, it should come as no surprise that when the use of the trademark stops, so does the trademark protection.

A trademark is officially abandoned if the use of the mark is discontinued with the intent to not continue further use.  When it is abandoned, then another company could begin use of it without infringing.  The trademark would be “up for grabs” in a manner of speaking.

In such a case, the person challenging the trademark would have to show that the prior owner intended to not continue using it.  Intent can be hard to prove, so the law has a “presumption of abandonment” if a trademark has not been used for three years.  That presumption can be rebutted, by showing evidence that they intent to resume use of the mark within a reasonably foreseeable future.  It is not enough to simply say that you “plan to use the mark in the future.”  Evidence of the intent to resume use typically should be in the form of a definite plan to reintroduce the mark.

The risk of abandoning a trademark may be one reason why you will sometimes see “retro” logos used by companies.  If the company wants to maintain their exclusive right to a particular trademark, they need to periodically use the mark in commerce and the company should maintain concrete plans for when to re-introduce the retro mark.

If you own a business, talk to the experienced attorneys at Goosmann Law Firm, PLC, in our Omaha, Sioux City, or Sioux Falls offices to discuss how you can best protect your business and its trademarks.