Westchester Women's Bar Association

Abandonment and Nonuse of a Trademark

Since federally registered trademarks are presumed valid under the law, the burden of proving abandonment of a mark initially lies with the party filing the claim. Under Section 45 of the Lanham Act, it states that a mark will be deemed abandoned if it has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. If there is nonuse for three consecutive years, there is a presumption of abandonment, and a prima facie case is established.

In terms of a cancellation proceeding, once there is evidence of three years of nonuse, then the burden shifts to the trademark owner to show use during the three-year period or that despite the three years of nonuse, there was intent to resume use of the mark within a reasonably foreseeable time. It is much easier to prove abandonment if there has been three years of nonuse, so that the presumption attaches. If there isn't three years of consecutive nonuse, then the burden remains with the party bringing the claim to show nonuse and lack of intent to resume use by a preponderance of evidence. This is a difficult burden for a party to meet.

The burden for proving a nonuse claim is similar to that of an abandonment claim. See United Global Media, Inc. v. Bonnie Tseng, 112 USPQ2d 1039 (TTAB 2014) [precedential], where the applicant filed a use based application for providing information about beauty, and an opposition was filed with the Trademark Trial and Appeal Board ("TTAB" or the "Board"). The Board held that the opposition was sustained for nonuse, and the application was void ab initio. If the applicant files with the USPTO based on use of the mark, then there must be use in connection with ALL the goods and services identified in the application before the filing of the application.

An opposer or petitioner can present a case of nonuse by showing the applicant or registrant's inability to present any evidence that there was use of the mark in commerce. If this occurs, the burden shifts to the applicant or registrant to rebut the case, similar to an abandonment claim. If the application was based on an intent-to-use use the mark with the goods or services, then use of the mark must have occurred before the filing of an allegation of use or statement of use. See our blog post, Proving Nonuse Of A Trademark Prior To The Application Filing.

The TTAB recently initiated a pilot program to explore a faster and more efficient way to cancel a mark if the claim is based on abandonment or nonuse. The goal is to maintain the integrity of the U.S. Trademark Register by reflecting registrations that are in use in commerce. To learn more about this pilot program, see our blog post entitled, The USPTO's Efforts To Improve Accuracy Of The Trademark Register. The Board will identify the cases appropriate for the expedited procedure. To qualify, a party can claim there was (1) abandonment of use of the mark in connection with one or more of the goods or services (keep in mind abandonment means nonuse in addition to an intention not to resume) and/or (2) nonuse, meaning no use of the mark occurred for one or more of the goods or services prior to the filing of a use based application or before filing a statement of use.

Cases with counterclaims are not eligible for the expedited cancellation proceedings. Once the case has been identified for the pilot program, the Board will participate in the discovery conference to discuss whether the parties will stipulate to one of the Accelerated Case Resolution options. See TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 USPQ2d 1786 (TTAB 2018) [precedential], an example where the Board identified the matter for expedited cancellation on the ground of abandonment. The Board determined that the petitioner did not present a prima facie case of abandonment and dismissed the petition for cancellation. This expedited proceeding will allow a petitioner to quickly and efficiently clear a blocking mark from the Register without having to bring all available claims or run the risk of being prohibited from raising additional claims in the future. If you have additional inquiries about cancellation proceedings or other trademark related questions, please contact the firm for a courtesy consultation.

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