Learn How to Handle Trademark Abandonment: Revive, Claim, and Protect Your Brand

Learn how to handle trademark abandonment — navigating the complex world of trademarks can be daunting, especially when handling abandoned trademarks.

Understanding (1) what constitutes an abandoned trademark, (2) the potential opportunities and pitfalls associated with using one, and (3) the process for reviving or claiming such a trademark (and starting a new trademark registration online) is crucial for business owners and entrepreneurs.

In this article, we'll explore these key aspects in detail and provide insights on how a seasoned trademark attorney can guide you through these intricate processes, ensuring your intellectual property remains protected and legally sound.

How do you define what an abandoned trademark is?

An abandoned trademark is a trademark that has lost its legal protection due to the owner's failure to use it or maintain its registration.

This can happen for several reasons:

1. Non-use: If the trademark hasn't been used in commerce for an extended period, typically three years, it may be considered abandoned.
2. Failure to renew: Trademark registrations require periodic renewal filings. The trademark can be deemed abandoned if the owner fails to submit the necessary renewal documents and fees.
3. Lack of intent to use: If the trademark owner has no intention of using the trademark in commerce, it may be classified as abandoned.

When a trademark is abandoned, it means that the original owner no longer has exclusive rights to it. This opens the possibility for others to use or register the mark under certain conditions without risk of trademark infringement.

Additionally, the trademark trial and appeal board (TTAB) plays a crucial role in these situations. The TTAB adjudicates disputes over trademark registration, including cases of alleged abandonment. Their decisions can influence whether a trademark is deemed abandoned and a new party can successfully register the mark.

However, the specifics of what constitutes abandonment can vary based on jurisdiction and specific circumstances, making it essential to consult legal expertise when dealing with such matters.

Can you use an abandoned trademark?

Yes, you can potentially use an abandoned trademark, but there are essential considerations to remember.

When a trademark is abandoned, it no longer enjoys the exclusive legal protections once granted to its owner. This means that others may use or register the trademark, but there are several factors to consider:

1. Verification of abandonment: Before considering using the mark, ensure it's truly abandoned. This involves checking the trademark's status with the relevant trademark office to confirm that it's no longer in use and that the original owner hasn't renewed or revived it.
2. Risk of opposition: Even if a trademark is abandoned, the original owner or other parties might still oppose your use of the trademark, especially if they have a vested interest or if the abandonment was recent. This can lead to an abandonment claim, where the original owner asserts that the trademark was not truly abandoned.
3. Trademark registration: To secure your rights, you should file a trademark application to register the abandoned trademark in your name. This registration process can help establish your ownership and provide legal protection against potential disputes.
4. Market presence: Consider whether the abandoned trademark has residual goodwill or recognition in the market. Using a trademark that consumers still associate with another brand can lead to confusion and potential legal challenges.
5. Legal advice: Given the complexities involved, seeking legal counsel from a trademark attorney is wise. They can help you navigate the process, assess the risks, and ensure that your use of the abandoned trademark is compliant with trademark laws.

Using an abandoned trademark can be strategic, but it requires careful due diligence and legal guidance to avoid potential pitfalls and ensure a smooth transition.

Want to learn how to apply for a trademark? Read our complete article “How to Apply for a Trademark: A Detailed Guide.”

How do you revive an abandoned trademark?

Reviving an abandoned trademark involves several steps and can be a viable option if you wish to regain legal protection for a trademark you previously owned but have since neglected. Here's how you can go about it:

1. Determine the reason for abandonment: Understand why the trademark was abandoned in the first place. This could be due to non-use, failure to renew, or administrative errors. Identifying the reason is crucial as it will determine the action required to revive it.
2. File a petition to revive: Most trademark offices allow you to file a petition to revive an abandoned trademark. This petition typically requires a statement explaining the reason for the abandonment, proof that the abandonment was unintentional or that there is a valid reason for the delay in filing the required documents, and payment of any applicable fees.
3. Submit required documentation: You may need to submit additional documentation along with your petition, such as proof of continued use or intent to use the trademark in commerce and affidavits or declarations supporting your claim.
4. Demonstrate use in commerce: If non-use was the reason for abandonment, you must show that the trademark is now being used in commerce. This involves providing evidence such as sales records, marketing materials, or product packaging displaying the trademark.
5. Consult with a trademark attorney: Navigating the revival process can be complex, and the requirements may vary depending on the jurisdiction. Consulting with a trademark attorney can provide valuable guidance and increase your chances of successfully reviving the trademark.
6. Respond to office actions: If the trademark office issues any office actions or requests for additional information, respond promptly and thoroughly to avoid further delays or complications. Consult an attorney for a professional office action response.

Reviving an abandoned trademark requires careful attention to detail and adherence to legal procedures.

By following these steps and seeking professional assistance, you can restore your trademark's legal protection and continue to benefit from its brand value.

How a seasoned trademark attorney can help you

Navigating the complexities of trademark abandonment and revival can be challenging, but a seasoned trademark attorney can provide the expertise and support you need.

They offer guidance through the legal process, ensure accurate documentation, and provide strategic advice tailored to your situation.

By handling office actions and representing your interests in disputes, they help secure and protect your trademark rights, giving you peace of mind and allowing you to focus on your business.

Revive an abandoned trademark today with one of Trademarkia's seasoned US trademark attorneys (we have a global team too!).