Abandonment and Indication of Origin

Nonuse is not the only reason a trademark can be abandoned, so is loss of significance as an indicator of origin. This can occur for a variety of reasons. One major reason can be uncontrolled licensing and a failure to maintain the quality of the goods. The owner has a duty to ensure the goods that use his trademark are consistent with the quality consumers expect from the mark, otherwise the consumer is being deceived. Another reason can be failure to take action against third party use and infringers. If the owner does not use their rights to stop such usage, then there is no way for a consumer to know where the goods are coming from. If goodwill is not transferred along with the trademark, then the assignment may be invalid and the trademark abandoned. Evidence of transferring goodwill, such as other assets, may be required to demonstrate this. Lastly, material changes to the goods which completely change the goods or make a product of inferior quality could lead to abandonment. To avoid abandonment, remember to not only use your mark, but use it in a way that it clearly indicates the source of your goods or services.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Abandonment

When a trademark no longer identifies the origin and quality of goods or services then it is abandoned. This means that the owner’s rights regarding the trademark are forfeited and someone else may now use the trademark. This does not mean that you should start using a trademark that you think will be abandoned. Good-faith pre-abandonment use is only permissible to establish priority if there was no knowledge. Abandonment occurs either when a trademark is not being used and there is no intent to use or when the trademark becomes a generic term for the goods or services it is used for. In either case this now means it is not acting as an identifier of origin or quality. If a trademark has not been used for three consecutive years, then the owner must demonstrate their intent to resume commercial use or else the mark will be abandoned. Evidence that can be used to demonstrate intent to resume commercial use includes marketing proposals or targeted use only to specific customers. It is important remember the mantra use it or lose. Your rights hinge on your use.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.