How to acquire an abandoned trademark?

The trademark registration process can seem hard at first, but maintaining a trademark can sometimes prove to be even harder. Despite the time and effort, somebody has already put into establishing their brand in the market, there may be times when they might abandon their trademark — purposely or inadvertently. If that happens, the trademark is considered abandoned and can be acquired by other business owners. However, when registering an abandoned trademark, there are a couple of important things business owners have to consider.

By

Igor Demcak

What is an abandoned trademark?

Trademark abandonment occurs when the trademark owner deliberately ceases to use the trademark for three or more years, with no intention of using the trademark again in the future. When a trademark is abandoned, the trademark owner may no longer claim rights to the trademark.

A trademark application that is declared abandoned is dead and no longer pending. Abandonment occurs under several circumstances.

  • If the Trademark Office does not receive a response to an office action letter from an applicant within six months from the date, the office action letter was mailed, the trademark application can be considered abandoned.

  • If the Trademark Office does not receive a Statement of Use from an applicant within six months from the issuance of a notice of allowance, it can be considered abandoned.

Can you acquire an abandoned trademark?

It is possible to claim a trademark once it’s dead.  When a trademark is listed as abandoned, its previous ‘live’ status won’t bar you from registration.  However, you will run into problems if the original owner is still using the trademark or decides to start using it again after a period of time.  In these instances, the original owner may still have strong rights to the trademark, which means that you would be exposed to a claim of trademark infringement if you began subsequent use. 

Here are some things that business owners should consider prior to attempting to register an abandoned trademark:

Length of trademark abandonment

As a general rule, the longer a trademark is abandoned, the more likely you are to face no pushback from the original owner. Once a trademark is not used for three years, it is considered presumptive abandonment. That’s the common span that the IP Offices require trademarks to be maintained, meaning if the proper paperwork hasn’t been filed during this time, the trademark is potentially free to register by other parties. However, if it’s still listed as ‘live’ on the IPO website, business owners interested in the trademark will have to go through the trademark cancellation process. Essentially, a complaint is filed along with all the collected evidence of abandonment. Then, the owner of the trademark has an opportunity to respond and challenge the claim of abandonment. Suppose the owner does not respond or cannot refute the evidence of abandonment. In that case, the IPO will cancel the trademark registration, and another business can proceed to file its own application.

Reasons for trademark abandonment

It is strongly recommended to search the USPTO’s website to see why the trademark was abandoned. 

  • If it was due to non-use, then the chances of acquiring the trademark are higher. The previous owner has the burden of proof to show they still use the trademark. Evidence to counter a registration attempt includes actual advertising with the trademark, meetings with distributors that involved using the trademark or retaining a licensing agency to work with the trademark.

  • If a dead trademark occurred due to a failure to file a trademark renewal, the original owner might still be utilizing the trademark. They may have just accidentally missed the deadline. This can often be verified by searching online to see if the trademark is still in use. The two other most common ways that a trademark is marked abandoned is when a response is not timely filed in response to an office action or notice of allowance. However, often these deadlines are missed when the applicant has intentionally chosen to abandon the trademark.

  • If the trademark was abandoned because of opposition from a third party, this means someone else is currently using the trademark. An attempt to register it will most likely lead the opposed trademark also to dispute your registration.

Ultimately, in order to claim an abandoned trademark, business owners must follow the registration process from the beginning and submit their own application for the trademark. You can find out more about the trademark registration process at Trademark Academy or by scheduling a free consultation to get more information on options for registering an abandoned trademark.

Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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