Avoid Inadvertent Abandonment Of Your Trademark

One of the challenges trademark owners face in maintaining their trademark is the risk of inadvertently abandoning their trademark when there is some period of non-use of the mark. Unbeknownst to many trademark owners, abandonment of a trademark can easily happen due to matters of ordinary practice, such as a temporary cessation of production, a failing product line, or low level of sales.

The Lanham Act, which is a federal trademark law, provides that abandonment of a trademark occurs when (1) the legal owner ceases to use the mark (non-use), and (2) the owner lacks intent to resume use of the mark in the reasonably foreseeable future.1 As demonstrated below, the key to securing the rights to a registered trademark with the United States Patent and Trademark Office is to continue using the mark, and, possibly more importantly, to preserve evidence that the owner intends to resume use of the mark, if for any reason they cease use of the mark.

What Constitutes Non-Use?

The determination of non-use occurs on a case-by-case basis and is often confusing for trademark owners. Some courts (mainly Ninth Circuit and California district courts) offer a bright line rule that even a single instance of use prevents abandonment if such use is made in good faith. For example, in Electro Xource, LLC v. Brandess-Kalt-Aetna Group, Inc., the Ninth Circuit held that the Lanham Act requires complete discontinuance of use for abandonment.2 On the contrary, other courts have held that token use or sporadic use is not a bona fide use under the Lanham Act.3 For example, in Continental Grain Co. v. Strongheart Products Inc., the Trademark Trial and Appeal Board held that token annual sales of KIT KAT cat food for the purpose of maintaining trademark rights was sufficient to warrant a finding of abandonment.4 Similarly, in Del-Rain Corporation v. Pelonis USA, Ltd., the Second Circuit held that low-level sales, such as sales of the remaining stock of an abandoned line of merchandise, do not constitute a bona fide use in the ordinary course of trade that suffices to defeat a finding of abandonment.5

Courts do not have a uniform approach to determining what constitutes non-use; however, they have been consistent in putting great emphasis on the trademark owner's intent. As discussed below, a trademark owner may be able to avoid abandonment by proving his or her intent to resume use of the trademark.

Intent to Resume Use of the Mark: Is Objective Evidence or Subjective...