There are many reasons why you should get a trademark registration for the names, logos, and taglines you use (or intend to use) in connection with the advertising and sale of your products or services. Personally, I like to think of a US trademark registration as an insurance policy. You purchase automobile insurance in case you’re involved in a car accident. You buy homeowners insurance in case your house goes up in flames. And you purchase health insurance in case you become seriously ill. Of course, you hope you never have to use your insurance policies, but you’re extremely glad you bought them if a tragedy or disaster does occur. Similarly, a trademark registration is like insurance on your trademark. It protects one of your most valuable business assets and assists you in recovering the monetary damages you’ll likely suffer as a result of an unexpected infringement or misappropriation by someone else.
A surrender of a trademark registration is a voluntary request that the United States Patent and Trademark Office (USPTO) cancel the registration. There are a handful of reasons why you might choose to voluntarily surrender your trademark registration. For example:
A canceled trademark registration in the United States Patent and Trademark Office (USPTO) is a trademark registration that’s no longer valid. Once a registration is canceled, it’s considered dead and cannot be used by the USPTO to refuse registration of a trademark filed by someone else. The owner of a canceled trademark registration loses all of the benefits and protections associated with USPTO trademark registration, and it potentially creates a situation where someone else could register a confusingly similar trademark for identical or related products/services.
An express abandonment of a trademark application is essentially a voluntary request that the United States Patent and Trademark Office (USPTO) terminate the registration process. There are many reasons why you might choose to expressly abandon your trademark application. For example:
- You’re no longer using your trademark in commerce
- You no longer have an intention to use your trademark in commerce
- A trademark opposition or concurrent use proceeding was filed against your application
- You entered into a settlement agreement with a third-party that requires express abandonment of your application
- You’ve filed a trademark appeal but decide you don’t want to risk an adverse ruling
An abandoned trademark is not same as an abandoned trademark application you may come across when conducting a USPTO trademark search 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.