Trademark rights can be acquired only through commercial use. If you don¿t use your trademark after you get it you may lose it. This is called abandonment. For abandonment to occur, you must have discontinued the use. It is not considered abandonment if you discontinue use because of pressures beyond your control. If a person fails to use a trademark for three years, it is considered abandoned.
Abandonment of Trademarks
When is Nonuse Excusable?
Nonuse of a trademark is excusable when it constitutes what a reasonable business person having intent to use the trademark would do. If you can prove intent to resume use, you can defeat an abandonment claim.
Must Abandonment be Nationwide?
Since federal registration is nationwide, abandonment must be as well. If you stop using the trademark only in a particular area, there is no abandonment claim. However, since use must be interstate (in more than one state), if a user withdraws to primarily intrastate use (within the same state), the withdrawal would be considered nonuse.
What Might Cause the Trademark to Lose Its Significance?
A trademark can be considered abandoned if it has lost its significance. Significance can be lost if the trademark’s owner:
- Fails to regulate its use;
- Excessively licenses it;
- Fails to exercise reasonable controls over those he allowed to use it; or
- Fails to stop unauthorized use by others of the trademark.
How Can I Oppose the Registration of a Trademark Similar to Mine?
If you feel you may be damaged by another person’s trademark registration, you may oppose it. You must do so within 30 days after the other person¿s intent to use application is published in the Official Gazette of the Patent and Trademark Office. The opposition is heard in front of the Trademark Trial and Appeal Board (TTAB) rather than a Court.
What Will Happen if I Lose?
The decision by the TTAB can be reviewed by a Court of Appeals for the Federal Circuit. The first time an action is filed, it is termed de novo. This term means that the party who originally filed suit has the opportunity to retry the entire case and evidence not admitted the first time may be admitted the second time.
Should I Consult a Lawyer about my Trademark Issue?
The deadlines and regulations for trademark registration are detailed and strict. A trademark attorney can help you meet all the deadlines and fulfill all the requirements. A lawyer can also participate in on-going research to make certain no one else is using or diluting your trademark without your permission. Additionally, if you have an issue of trademark opposition, a trademark lawyer can guide you through the difficult process of being opposed or opposing another person’s trademark registration.
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