In What Ways Can One Lose the Right to a Trademark?

Unlike copyrights or patents which have a limited life, trademarks, at least theoretically, can exist indefinitely. However, under certain circumstances, trademarks can be “lost.” A trademark is “lost” when it ceases to identify the origin or quality of the goods or services on which it is used. The most common ways to lose a trademark are through (1) abandonment; (2) using the mark in a “generic” manner; (3) licensing the mark indiscriminately; and (4) failing to prosecute infringers.

Under the Lanham Act, a mark will be deemed abandoned when the trademark owner has discontinued use of the mark in connection with the particular good or service and has no intent to resume use within the reasonably foreseeable future. In general, nonuse for three consecutive years creates a presumption of abandonment. A trivial or token interim use will not be sufficient to avoid a finding of abandonment. Even longer periods of nonuse will not create a presumption of abandonment under some circumstances. One is when the goodwill in the mark continues after the nonuse (i.e., where the public still associates the mark with the owner and its product or service). Another is when there is an explanation for the nonuse (i.e., the owner is in the process of repositioning the product or its market). Finally, abandonment will also not be presumed if nonuse is caused by factors beyond the owner’s control (i.e., war, labor strike, import problems, or some natural catastrophe). If a mark truly has been abandoned through nonuse, a subsequent resumption of use will not revive it. In such a case, the trademark owner must start to build trademark rights anew.