An abandoned trademark is not same as an abandoned trademark application you may come across when performing a trademark check using the Trademark Electronic Search System (TESS). The difference between the two is extremely important in determining whether your use of a particular mark is in violation of someone else’s trademark rights. Although people (including attorneys) frequently use the phrase “abandoned trademark” to refer to an abandoned trademark application, such use is improper, imprecise, and can mislead others into believing that a trademark is available for use and registration when it is not.
What is an Abandoned Trademark?
An abandoned trademark is a trademark that’s no longer in use in connection with the advertising and sale of products or services. For a trademark to be considered abandoned, the following three requirements must be met:
- The owner of the trademark discontinued use of the mark.
- The owner of the trademark has no current intent to resume use of the mark.
- The owner of the trademark had an intent not to resume use of the mark at the time the owner discontinued use.
If a trademark hasn’t been in use for a period of three consecutive years, then there’s a legal presumption that the mark has been abandoned. This means that in a dispute between two parties as to whether a particular trademark has been abandoned, the burden essentially shifts to the owner of the trademark to prove non-abandonment of the mark. If the trademark is eventually deemed abandoned, then the owner can no longer claim any rights in the mark whatsoever.
It’s important to understand that a trademark can be abandoned regardless of whether or not (1) the owner ever filed a trademark application seeking to federally register the mark, or (2) there is an active federal trademark registration for the mark. If a federally registered trademark has been abandoned by its owner, the trademark registration can be challenged by instituting a trademark cancellation against the registration.
What is an Abandoned Trademark Application?
An abandoned trademark application means one thing and one thing only: that the trademark application is abandoned. No more, no less. Although there are many reasons why a trademark application may go abandoned, they can be grouped into three categories:
- The owner of the trademark application filed an express abandonment of the application.
- The owner of the trademark application was unsuccessful in a Trademark Trial and Appeal Board (TTAB) proceeding (either a trademark appeal or a trademark opposition).
- The owner of the trademark either purposely or inadvertently allowed the application to go abandoned by not meeting a registration requirement. For example, not responding to a trademark office action, not filing the Statement of Use, or not submitting an Extension of Time to file the Statement of Use.
Any one of these situations results in a dead trademark and the abandoned trademark application is no longer of any legal significance to a third-party who may want file a trademark application for the identical trademark for similar or related products/services. In other words, a USPTO examining attorney cannot cite an abandoned application as a basis for refusing registration of your trademark.
However, an abandoned trademark application does not tell us whether the trademark itself has been abandoned. It’s very possible that the owner of an abandoned application is actually using the trademark in connection with the advertising and sale of products or services. This means that the owner may have legitimate common law trademark rights that are superior to any trademark rights you might have. As such, the owner could still theoretically challenge your use and/or registration of a confusingly similar trademark.
Which One Can I Claim?
Well, it depends on what you mean by the word “claim.” If a trademark has been abandoned (i.e. it meets the three requirements outlined earlier), then you’re free to adopt, use, and apply to register the identical trademark for similar or related products/services. In essence, you’ve “claimed” the abandoned trademark, but you don’t actually acquire any rights from the previous owner (as you would through a trademark assignment) because the previous owner had no rights to give you.
On the other hand, you cannot “claim” an abandoned trademark application under any circumstances. You can’t take over somebody else’s abandoned application or have the owner of the abandoned application transfer the application to you. Instead, you must file a brand new trademark application if you want to seek federal registration of your mark. Again, please remember that an abandoned trademark application does not necessarily mean the trademark in the application has been abandoned. You might need to perform more in-depth research to determine whether the mark has, in fact, been abandoned.
Questions About Abandoned Trademarks and Trademark Applications?
I’m experienced US trademark attorney Morris Turek. If you’re still unsure about the difference between an abandoned trademark and an abandoned trademark application, please feel free to contact me at your earliest convenience for a totally free consultation. You can reach me by phone at (314) 749-4059, via email at firstname.lastname@example.org, or by submitting the form near the bottom of this page. I look forward to speaking with you soon.