While trademark registration offers superior protections, trademark rights come from their use in business. The owner of a trademark must police the use of the trademark and enforce his or her trademark rights when necessary.Ā
In this article, you will discover whether it is possible to lose a trademark if you do not protect it.
What is Trademark Abandonment? – An IntroductionĀ
As the core federal trademark law in the United States, the Lanham Act has strict definitions to define what trademark abandonment is.Ā Ā
The term “trademark abandonment” refers to when a trademark owner discontinues the use of the mark without no intent to use it again. Whether an owner has a common law or a registered trademark, it must be actively used in business to prevent the presumption of abandonment.Ā
A presumption of abandonment happens when a trademark is not used for three years. Another ground of abandonment occurs when the owner of a trademark makes something that causes the mark to become generic.
Can You Lose a Trademark If You Don’t Protect It? – In DetailĀ Ā
Courts have taken three fundamental approaches to determine whether the failure to police a trademark or prosecute infringers constitutes abandonment. This three-pronged approach seeks to identify:
- Whether the owner’s failure to prosecute is irrelevant to the abandonment
- Whether the owner’s failure to prosecute results in abandonment by making the trademark generic, and
- Whether the owner’s failure to prosecute undermines the trademark’s strength
It is crucial to understand that policing a trademark does not mean bringing legal disputes in court with the sole purpose to avoid abandonment. Depending on the case, the owner’s failure to prosecute an infringer may not be associated with the occurrence of abandonment.
If a trademark owner fails to pursue infringers for too much time and the use of the mark becomes widespread between competitors and customers to the extent that it results in a generic name, the failure to prosecute may result in abandonment.
Please note that this type of situation only happens in case of continuing negligence of the trademark owner. Simply failing to enforce the trademark against a single infringer will not result in abandonment, as the scope of the infringement must be widespread.
Another possibility is the impairment of a trademark’s strength due to the owner’s failure to react against continuous infringement. In such cases, it is not common to find situations that eventually led to a total loss of rights over a trademark.
The premise is that the basis of a trademark is the connection in the mind of customers between the source of goods and services and the mark.
Accordingly, allowing competitors to use a trademark without proper reaction would gradually diminish this connection between the brand and the goods or services provided. The more intense the level of infringement allowed by the owner of the mark, the less strong the connection with consumers becomes.
Do You Want to Guarantee Optimized Trademark Protection? – Immediately Contact an Expert Trademark AttorneyĀ
A well-versed legal advisor in US intellectual property law, Attorney Romy B. Jurado willingly wants to help protect your interests. Contact us today by calling (305) 921-0976 or emailing [email protected] to schedule a consultation.Ā
