Why Was My Trademark Application Abandoned?

May 25, 2018

The United States Patent and Trademark Office (USPTO) is the government body that registers trademarks. These trademarks can be applied to business names, slogans, phrases, logos and symbols, and are an important element to protecting the intellectual property rights of any business.

Once a trademark has been successfully registered, you then receive exclusive rights to use the trademark and make money from the trademark. It is important to note however, that just because you have a registered trademark, that does not mean you are automatically protected.

Like in a football game, the initial registering of the trademark can be considered good offense, while the proper usage along with proactive monitoring and stopping infringements can be considered the defense. Just as both are crucial to winning a game, so are both in successfully protecting your trademark.

Abandoned trademarks, also known as dead trademarks, can cause you to forfeit your exclusive rights and can generally happen in one of four ways:

Nonuse

Federal law though the Lanham Act states that the owners of a trademark must actively use these marks as part of their business. This prevents people from registering or reserving trademarks for later use or to simply prevent others from using them.

Generally speaking, a trademark is considered to be in use when it is affixed to goods, containers, displays or labels. A trademark will fall into nonuse when a business stops using it and does not intend to continue using it, and generally occurs after three consecutive years of nonuse. At this point, third parties can begin to use the trademark and can even sell the same products or services.

Improper Use

Although a trademark is actively being used by a business, it can still be at risk of abandonment if it is being improperly used and leads to a loss of significance for the trademark. Improper use includes:

Genericism: When a trademark becomes overly generic or too common among general usage. For example, Aspirin was a trademarked name by the Bayer corporation. Another trademark that was severely at-risk was Xerox, a trademarked name for a photocopy machine, but which many universally refer to as a Xerox. In some cases, the popularity or success of a product can hasten the end of its protection.

Excessive licensing: When a business owner licenses the rights to a trademark but has failed to maintain control over the trademark.

Failure to Enforce: This is the good defense mentioned above, where you must actively monitor and prevent the unauthorized use of a trademark by identifying infringements, sending cease and desist letters and suing if they do not cooperate.

Lapse of Registration

Trademarks last for 10 years after an initial filing, but these trademarks can last indefinitely if the owner maintains their registration and continues to renew it. If a registration lapses, then it will be considered abandoned and available for third-party use.

Express Abandonment

Some trademark applicants may withdraw their registration documents or fail to respond to an Office Action Notice, which will cause the application to be abandoned. Often this happens when an applicant tries to register a trademark that is similar to another, already existing trademark.

Registering and Protecting Your Trademark

As you can see, the trademark registration process does not end once you’ve officially filed. It can be a lot of work to protect and maintain the intellectual property of your business, but it is something that is of crucial importance. In order to register your trademark and ensure that it isn’t abandoned for any of the reasons above, it can be helpful to work with a Houston trademark lawyer like those at Fears Nachawati.

The team of intellectual property lawyers at Fears Nachawati can explain every aspect of the process and help identify which aspects of your business or idea are most in need of protection. A concrete plan of action to protect your intellectual property and avoid abandonment can be one of the best contributors to the success of your business.

Don’t wait to legally protect your intellectual property. Schedule a free case evaluation with a member of our team by calling at (866) 705-7584 or by visiting the offices of Fears Nachawati located throughout the great state of Texas, including in Houston, Dallas, Austin, Fort Worth, and San Antonio.

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