This note is Part XI of our ongoing series on the “Fundamentals of Trademarks,” where a number of continuing posts have been dedicated to exploring trademarks in detail & depth. In Part X, we hammered on “Genericide – The First Way through which Trademark Rights Could be Lost or Terminated,” which marked the start of our discussion on the four ways through which trademark rights can be lost or terminated, including “genericide,” “abandonment,” “improper assignment/assignments in gross,” and “naked licensing.” In this regard, this blog post is titled “Losing/Terminating Trademark Rights Through ‘Abandonment,’” and is a discussion of the concept of “abandonment” and how it could lead to the loss or termination of trademark and ownership rights.
Abandonment – The Second Way through which Trademark Rights Could be Lost or Terminated
A trademark owner may decide, voluntarily, to discontinue the use of a mark with the intention of not resuming its use. This is known as abandonment. Under the trademark law, prima facie evidence of abandonment can be shown if the mark has been discontinued for a period of 3 years. Generally, complete cessation of use is required for abandonment to hold; therefore, a party may defend and prevail against a claim of abandonment following a mere act such as receiving royalties or a single instance of good faith use of a given mark.
However, although abandonment could be prevented through de minimis use of a trademark, the law requires such use not to be merely token defensive use but good faith use with the intention of preserving a right in a mark, which, consequently, leads to abandonment. The trademark law also allows mark owners to cease using one version of a mark in favor of a modified one without the former being abandoned, as long as a similar, continuous commercial impression is derived from the first and modified versions of the same mark.
Further, abandonment may also result from tolerance of third-party use, which implies that a mark owner may lose their mark if they tolerate the use of their mark by a third party for a given period. In litigations involving trademark infringement, a plaintiff may raise abandonment as their defense to such a claim. However, a defendant may be defeated by a plaintiff in their claim to a competing interest in a mark since, as we mentioned in a previous blog post under this series, trademark protection significantly relies on, among other things, the continued use of a mark. Once a trademark has been abandoned, a third party, who must be the first to claim the mark, is allowed to adopt it following its return to the public domain.
In the next blog post and Part XII of the series, we shall move the discussion forward by hammering on “Losing/Terminating Trademark Rights Through ‘Improper Assignment.’”
Stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.