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Losing Protection of Registered Trademarks by Abandonment

Trademarks are an important part of any business. Once a mark is registered and, therefore, federally protected, the protection afforded by the registration is dependent upon continued use of the mark. The owner of a trademark loses its rights to a mark if it does not use the mark in a consistent and controlled manner.

Since the purpose of a trademark is to indicate the source or origin of the associated goods or services, if the mark no longer indicates that source or origin, the law’s protection of the mark will cease. When this happens, the mark is deemed abandoned.
Under the Lanham Act, the federal law governing trademarks, a mark is considered abandoned (1) when its use has been discontinued with no intent to resume such use, or (2) when any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used[1] or otherwise to lose its significance as a mark.[2]
Under the first prong of the statute, nonuse for three (3) consecutive years constitutes prima facie evidence of abandonment. The second prong comes in to play when a trademark owner fails to exercise adequate control over a licensee’s use of its trademark such that the mark no longer identifies the source or origin of the goods or services that the trademark owner originally controlled. In either case, a business that asserts an abandonment defense in order to use or register the mark as its own could deprive the trademark owner of enforcement of the mark.
The federal circuit courts are split on the standard of proof required to successfully argue that a mark has been abandoned, and the matter is not settled in all jurisdictions. Some circuits have held that abandonment must be proved by “clear and convincing evidence”, while others have held that a “stringent”, “heavy” or “strict” burden of proof is required. The Second Circuit, which includes New York, has not directly decided the standard, but the district courts within the Second Circuit have interpreted the language “strictly prove” and “stringent standard” as requiring “clear and convincing evidence”.
Although the proponent of an abandonment argument must meet a high burden to be successful, the best advice is to protect your valuable intellectual property by continued and controlled use.
[1] “Kleenex®”, “Vaseline®” and “Band-Aid®” are just a few examples of a mark becoming the “generic” name for the goods. Each of these is a brand name that many people use to describe the actual goods themselves rather than the brand. In order to protect the marks in these cases, the trademark owners have had to insert the word “brand” next to the names of the products on their packaging and marketing materials.
[2] 15 U.S.C. § 1127.