Do you know what matters more than the registration of your business’s trademark? Its usage. One major way that a business can lose a viable trademark is non-use for a period of three or more years — it’s called trademark non-use abandonment.
The USPTO tries to keep the registry fresh and not have any unused trademark on the registry. They periodically will send out Office Actions to trademark owners to see if registered marks are being used. This information may sound intimidating for businesses, who may fear that they are not using their mark enough to retain the registration.
In a recent TTAB case, deemed precedential, the Salud nutritional supplement company was allowed to keep their mark in spite of years of non-use. Below, we will go into why they won.
Defining Trademark Non-Use Abandonment
According to the Trademark Act, marks are considered abandoned under one of these conditions:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
What does this mean in layman’s terms?
The first tenet is clarifying the circumstances surrounding a mark that has not been in use. If it seems like the business’s active trademark use as a source identifier have dropped off, then the mark qualifies as abandoned.
The second tenet addresses how a mark needs to be distinct to remain a true mark. You might mistakenly think it is a win if your trademark name becomes synonymous with the item, which is what happened with the mark ASPIRIN . However, it is quite the opposite! Trademarks should be several steps away from describing a product – they act as a symbol for the business. ASPIRIN was declared generic by the USPTO and the trademark registration cancelled.
How the Non-Use Abandonment Clause Applies to This Case
The recent TTAB ruling for ARSA Distributing, Inc. v. Salud Natural Mexicana S.A. de C.V. leans more on the first condition for non-use abandonment. Specifically, the TTAB found that Salud did have intentions to use their mark EUCALIN, but they could not employ it for years during sanctions from the U.S.
Salud submitted proof of its intention in a few ways:
- Filing trademark applications once sanctions were lifted
- Filing trademark infringements against the defendant companies using their mark
- Petitioning to cancel ARSA’s filing for the debated mark
The TTAB validated these efforts to use their mark, even if it remained “under arrest” for seven years, well past the three year minimum for abandonment consideration.
Make Preparations When You Cannot Use Your Mark
You may glean a familiar intellectual property lesson from this post: being proactive pays. If your business becomes unable to use its trademark for any reason – document, document, document. If another business comes along to challenge your trademark, you can use this proof to keep your registration.
Likewise, you can also use trademark non-use abandonment to your advantage. If your business wants to take over a mark that appears to be abandoned, you can file a petition to cancel that mark with the Trademark Trial and Appeal Board (TTAB). If you are successful in having the trademark registration cancelled you can then claim ownership of the mark for your own use and file a trademark application for your own business, product and/or service.
I have successfully filed Petitions to Cancel trademarks on behalf of several clients who have then registered the trademarks for their own businesses (i.e. banking services, selling and brewing beer). A seasoned IP lawyer can help a business owner with trademark abandonment issues and help save a trademark registration or help cancel a trademark registration that is no longer being used in commerce.