Trademarks Abandonment at TTAB and the Courts: Impact on Global Brands

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 that cause the mark to become generic or otherwise 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 trademark infringement allegations and 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.