If you are a trademark owner who has several registered trademarks that correlate to various products in your portfolio, then you may have periods of time in which certain trademarks are not currently being used. While periods of non-use are often unavoidable, there are a few things to keep in mind during these times so as not to inadvertently abandon your trademark or cancel your registration.
To abandon a mark means to cease use of the mark. Abandonment of an application is a formal term which means that the unregistered application is no longer pending and, thus, cannot mature into registration. The term cancellation is used to describe what occurs when the owner of a trademark registration no longer has rights to a mark, and the registration ceases to be enforceable. Occasionally abandonment or cancellation may be intentional, but, most of the time, it is inadvertent.
One way a federally registered trademark can be cancelled is if the owner has a period of non-use of the trademark and an intent not to resume use of the mark. A temporary cessation of use of the mark in commerce is not going to be enough to qualify as non-use. Even minimal or limited sales of a covered product bearing the mark will be considered enough to negate a finding of non-use.
While there is no bright line regarding how much time is required to qualify as non-use, the Lanham Act states that a period of non-use for 3 years will create a rebuttable presumption that the owner has abandoned use of the mark. This presumption can be overcome, however, if the trademark owner counters with evidence of either actual use during the alleged period of non-use or evidence of a bonafide intent to resume use of the mark. The fact that the presumption can be overcome by the trademark owner with a bonafide intent to resume use of the mark is good news for a trademark owner who is defending a mark against an allegation that the mark was abandoned during a cancellation proceeding. But fulfilling the intent to resume use requirement can be a little tricky and will require more than just a general statement from the trademark owner that the mark will be used in commerce again soon. If you are a trademark owner who would like to find out more information about avoiding abandonment or cancellation of your mark(s), please contact Carstens & Cahoon, LLP.
By James Tuck