When laypersons refer to "abandoned trademarks," they may be speaking about either of two items that are related, but that the United States Patent and Trademark Office (USPTO) handles in slightly different ways. The first of these items is an abandoned trademark application, and the second is an expired trademark registration. Because the term "abandoned trademark" is used somewhat loosely outside the profession of intellectual property (IP) law, it is important to clarify the two categories in which an "abandoned trademark" may be found, as an abandoned application has implications somewhat different from an expired registration. If you are concerned about how to revive an abandoned trademark application, or how to reassert ownership over a trademark whose registration has expired, you may be able to gain perspective by scheduling a consultation with an IP lawyer from Sullivan & Carter, LLP. Call (929) 724-7529 today to discuss the specifics of your situation with our Chicago-based team.
Even in professional fields where discussion of trademarks and intellectual property rights management is an everyday occurrence, it is not unusual to hear the term "abandoned trademark" used somewhat imprecisely, to refer to either what the USPTO calls an "abandoned application," or to what the agency considers an "expired" registration. The situation can be further complicated by the fact that the common law basis for trademark rights pre-dates the codification of United States intellectual property law, and by the (related) fact that, at the state level and in global commerce, regulatory bodies may use somewhat their own, slightly different criteria for determining trademark abandonment.
At the federal level and within the United States, both abandoned trademark applications and expired trademark registrations have in common the trademark owner's presumptive surrender of their claim to intellectual property rights in the trademark – a fact which helps to explain why the two USPTO categories are frequently folded together in conversation as simply "abandoned trademarks," as the term may logically apply to both. However, the USPTO uses somewhat different criteria for recognizing abandoned applications for trademark registration vs. expirations on trademark registrations that have already been approved. The differences have procedural implications for how to revive a trademark whose registration is considered expired or abandoned, so determining which situation applies is an important step toward reviving an abandoned trademark.
Laypeople often find the way United States jurisprudence handles the "logic" of trademark law somewhat counterintuitive. However, understanding the reasoning behind the system can also make the procedures involved much easier to navigate. In essence, trademark law in the United States operates on the premise that the rights to a trademark derive from devising a distinctive "mark" and using that mark "in commerce" (for purposes of federal trademark law, "in commerce" means conducting transactions across state lines), such that consumers come to associate (or at least have the opportunity to come to associate) the mark with the origin of the goods or services the owner of the mark is offering for sale.
In the context of USPTO trademark procedures, trademark application is not a reference to a request for a trademark, which the USPTO grants or denies, since the person filing the application is assumed to already have the trademark and indeed to be using it in trade; instead, "trademark application" is frequently used as a convenient shorthand to refer to the application to register a trademark. The application means that the trademark owner submits their mark, with the required fees and supporting documentation, for the USPTO's examining attorney to consider – with the hope being that the USPTO will approve the application and add the mark to the federal trademark register. When missteps occur during the trademark application process, such as missing the deadline for responding to a USPTO office action or sending an incomplete response to an office action, the USPTO may send a Notice of Abandonment to inform the trademark owner that their application has been classified as "abandoned" and is no longer active.
Once a trademark application has been approved, there are two main requirements for maintaining an active federal trademark registration through the USPTO:
The continuing use requirement may or may not be the easiest element to satisfy; sometimes trademark owners may have to suspend their business operations, for a variety of reasons, and in that case continuing to show that the mark is still in use in commerce may become quite difficult. Additionally, maintaining proof of use requires the holder of the trademark registration to make updates when they discontinue associating the mark with a particular good or service that was listed on the originally approved application (even if the mark itself remains in use with other products or services that appeared on the same application). Any new goods or services to be added will require a new filing, and so continuing use may be more complicated than it appears. Any filings to delete goods or services from the trademark registration will not affect the filing schedule for registration renewal paperwork, to which trademark registration holders will need to pay close attention, as the USPTO reminds trademark owners that exceptions to those filing deadlines are rare. In some cases, a registration previously approved may be audited, in which case another set of filings and evidence showing proof of continuing use may be necessary.
According to the Cornell University Legal Information Institute (LII), a trademark may be considered "abandoned" or expired when the owner has deliberately suspended use of the mark for at least three years, and the holder of the trademark registration shows no indication of intending to resume use of the mark. The LII criteria call back once again to the common law basis on which trademark registrations in the United States are founded, but the USPTO’s own renewal filing timelines, among other factors, can complicate this seemingly straightforward rubric. If the USPTO does determine that a trademark has been abandoned, the agency will consider its previous owner to have surrendered their intellectual property rights to exclusive use of the mark. Once such rights have been surrendered, the former trademark owner will no longer have access to the protections for their intellectual property rights that accompany federal registration, even if the mark was previously registered through the USPTO.
Given the difficulty and expense involved in securing a federal trademark registration in the first place, most owners of registered trademarks have considerable incentive to make sure they keep their trademark in active use and to keep their trademark registration renewal paperwork up to date, so waiting for a trademark to be abandoned by its owner is not a recommended strategy for gaining intellectual property rights. However – again as per LII – in the event that the owner of a registered trademark both suspends use and allows their registration to lapse, then in three years the mark may be available for another party to claim. If you are interested in acquiring the use of a trademark that is still in active use, or one that has been out of use for less than three years, you may wish to consider discussing your situation with an experienced IP attorney from Sullivan & Carter, LLP, as negotiating for licensing or trademark allowance rights may sometimes be a good alternative to claiming an abandoned trademark.
If you receive a notice of abandonment from the USPTO, informing you that your trademark application is now regarded as abandoned, the document will specify the reason for the reclassification. The proper procedure for responding to the notice in order to revive an abandoned trademark application will depend on the reason cited in the notice.
The USPTO may consider the application to register a trademark abandoned if:
Applications may also be classified as abandoned due to USPTO error, or because the application was subject to a partial refusal or additional requirement and the applicant did not respond within the designated time frame.
All attempts to revive an abandoned trademark application will begin with a petition to revive, but the precise form elements used and the fees that may apply can differ, depending on the situation. Even viewing the options for selection will require login with an official USPTO account, so it may be helpful to discuss the process with an experienced trademark attorney in advance.
Reviving an abandoned trademark can be a complicated undertaking. The precise procedure to be followed will depend on why the trademark is considered abandoned, but consulting with an attorney experienced in USPTO requirements may make it easier to determine the appropriate forms, timelines, and filing requirements. At Sullivan & Carter, LLP, we offer trademark registration and advisory services to clients throughout the United States. Call our Chicago-based office at (929) 724-7529 today to set up a conversation with a member of our team.
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