Trademark Abandonment: Protect Your Brand from Costly Mistakes
As a business owner or entrepreneur, you have likely invested time and resources into developing your brand and securing trademark protection. Did you know that you can lose your trademark rights through abandonment? This blog post discusses what trademark abandonment means, why it happens, and most importantly, how you can avoid it.
What is Trademark Abandonment?
Trademark abandonment occurs when a trademark owner stops using the mark in commerce with no intention of resuming its use. In the eyes of the United States Patent and Trademark Office (USPTO), an abandoned trademark loses its protected status and becomes available for others to use and potentially register.
There are two primary ways trademark abandonment occurs at the USPTO:
1. Express Abandonment: Express abandonment occurs when the trademark owner voluntarily gives up their rights to an application or registration by filing a written request with the USPTO.
2. Unintentional Abandonment: Unintentional abandonment happens when the trademark owner fails to take required actions during the application process or after registration, often due to oversight or missed deadlines.
Understanding Express Abandonment
Express abandonment is a deliberate action taken by a trademark owner to surrender its rights to a mark. Here is what you need to know about express abandonment:
What it Looks Like:
A formal, written request filed with the USPTO.
The request must be signed by the trademark owner, someone with legal authority to bind the owner (e.g., a corporate officer), or a licensed attorney.
An express abandonment is submitted through the Trademark Electronic Application System (TEAS).
Once filed, the abandonment cannot be withdrawn.
When It Happens: Express abandonment can occur at various stages of a trademark's lifecycle:
During the Application Process: An applicant might choose to abandon its application if:
The applicant discovers a conflicting mark that would likely prevent registration and the applicant does not wish to pursue the application further.
The applicant’s business plans change, and the applicant no longer intends to use the mark.
The applicant wants to file a new application with different specifications.
After Registration: A trademark owner might expressly abandon a registered mark if:
The owner rebrands and stops using the old trademark.
The owner merges with another company and the surviving entity consolidates its trademark portfolio.
The owner wants to avoid maintenance fees for marks it no longer uses or values.
During Legal Proceedings: Express abandonment might occur during:
Opposition proceedings, where the applicant decides not to defend its application.
Cancellation proceedings, where the registrant chooses to surrender the registration rather than contest the action.
Consequences of Express Abandonment:
The trademark application or registration is removed from the USPTO's active database.
The mark becomes available for others to use and potentially register.
Any rights associated with the abandoned application/registration are lost, including priority filing dates.
It costs more money to prepare and file an express abandonment than to allow the application/registration to abandon on its own (e.g., failing to take action, discussed below).
Strategic Considerations: While express abandonment might seem counterintuitive, there are situations where it can be a strategic move:
Avoiding costly legal battles over a mark that is not central to a trademark owner’s business.
Streamlining a trademark owner’s trademark portfolio to focus on core brands.
Facilitating settlements in trademark disputes.
However, the decision to expressly abandon a trademark should not be taken lightly. It is important to consult with a trademark attorney before proceeding. There may be alternatives or consequences you have not considered.
Common Causes of Unintentional Abandonment
1. Failing to Respond to Office Actions: When the USPTO issues an Office Action (a formal letter outlining issues with your application), you have a limited time to respond. Failing to do so can result in abandonment.
2. Submitting Incomplete Responses: Even if you respond to an Office Action, an incomplete response can lead to abandonment if the issues are not fully addressed.
3. Missing Statement of Use Deadlines: For Intent-to-Use applications, failing to file a Statement of Use or request an extension within six months of receiving a Notice of Allowance can result in abandonment.
4. Failing to File Maintenance Documents: After registration, trademarks require periodic maintenance filings. Missing these deadlines can lead to the cancellation of your registration.
How to Avoid Trademark Abandonment
1. Set Up a Reliable Docketing System: Use a calendar or docketing software to track all important dates and deadlines related to your trademark applications and registrations.
2. Respond Promptly and Completely to USPTO Communications: When you receive an Office Action or other communication from the USPTO, respond by the deadline and address all issues raised.
3. Keep Your Contact Information Updated: Ensure the USPTO has your current email and mailing address to receive important notices and reminders.
4. Use Your Mark in Commerce: Regularly use your trademark in connection with the goods or services listed in your registration to maintain your rights.
5. File Maintenance Documents on Time: Set reminders for filing necessary maintenance documents between the 5th and 6th year after registration, 10 years after registration, and every 10 years thereafter.
6. Consider Working with a Trademark Attorney: An experienced trademark attorney can help manage deadlines, respond to Office Actions, and ensure proper maintenance of your registrations.
What If Your Application is Abandoned?
Depending on the circumstances, you may have options if your application/registration is abandoned:
1. Petition to Revive: If the abandonment was unintentional, you may be able to file a petition to revive within two months of of the issuance date of the examiner’s amendment.
2. New Application: If revival is not possible, you can file a new application. However, you will likely lose your original filing date and priority. It is possible that another applicant might file a conflicting application after your original filing date but before your new application filing date. The other applicant’s application could have priority over your new application.
Conclusion
Trademark abandonment can have serious consequences for your brand protection and enforcement strategy. By understanding the causes of abandonment and implementing proactive measures to avoid it, you can maintain the strength and validity of your trademarks. Remember, your trademarks are valuable business assets. Protect them diligently!
If you are unsure about the status of your trademarks or need assistance in maintaining them, do not hesitate to consult with an experienced trademark attorney. If you would like to discuss a trademark application or registration with an experienced trademark attorney, schedule a consultation here.
