Trademarks Abandonment at TTAB and the Courts: Excusable Nonuse, Cancellation Petition, Impact on Global Brands

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, June 12, 2018

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to IP counsel on trademark abandonment and the corresponding proceedings at the TTAB and in federal cases. The panel will address the bases for filing an affidavit of excusable nonuse with the USPTO so that a registration is not cancelled, and discuss how an abandonment decision affects a global brand.

Description

Under 15 USC §1127, a trademark is abandoned when its use has been discontinued without intent to resume use or when the mark’s owner engages in acts or omissions which cause the mark to become generic or otherwise to lose its significance as a mark. A frequent basis for a claim of trademark abandonment is the naked licensing of a mark, which occurs when a trademark owner permits a third party to use its mark without retaining and exercising control over the quality of the products or services sold under the mark. Once a mark is abandoned, the trademark owner loses all rights in the abandoned mark.

The party asserting abandonment bears the burden of proof. Under 15 USC §1127, nonuse of a mark for three or more consecutive years is prima facie evidence of abandonment. Evidence indicating a valid reason for the suspension of use and an intent to resume use of the mark shortly can overcome the presumption of abandonment.

Abandonment can be a defense against allegations of trademark infringement and also provide grounds for cancellation of a mark. Counsel and mark owners must understand abandoned trademarks, their own or their competitor’s, and the proceedings that accompany abandonment.

Listen as our authoritative panel of IP attorneys examines trademark abandonment and the corresponding proceedings at the TTAB and in federal cases. The panel will also address the bases for filing an affidavit of excusable nonuse with the USPTO so that registration is not canceled, and discuss how an abandonment decision affects a global brand.

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Outline

  1. Abandonment proceedings at TTAB
  2. Abandonment in federal cases
  3. Bases for filing an affidavit of excusable nonuse with the USPTO
  4. How an abandonment decision affects a global brand

Benefits

The panel will review these and other crucial issues:

  • How can you identify an abandoned trademark?
  • How can counsel demonstrate abandonment of a mark?
  • What impact can naked licensing have on trademark rights and abandonment?
  • What steps can you take to document your trademark use to protect against claims of abandonment?

Faculty

Hastings, James
James Hastings

Of Counsel
Collen Intellectual Property Law

Mr. Hastings has more than 20 years of experience representing corporate and entrepreneurial brand owners in all facets...  |  Read More

Thomas, Donna
Donna M.D. Thomas

Managing Principal
Astrachan Gunst Thomas

Ms. Thomas guides clients in commercial and intellectual property transactions, from publicly traded corporations...  |  Read More

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