Revive your trademark when it's abandoned - but when and how?

Reviving an abandoned trademark can be a strategic move to reclaim rights to a brand identity that may still hold value, even after a period of non-use. However, the process and the success of such a revival depend heavily on the specific circumstances surrounding the abandonment, the trademark laws of the jurisdiction in question, and the evidence available to support the revival claim. Here’s an extensive overview of how this can be achieved, focusing on the United States as the jurisdiction.

Understanding Trademark Abandonment

In U.S. trademark law, a trademark is considered abandoned when its use has been discontinued with intent not to resume its use. Intent not to resume can be inferred from circumstances. According to the United States Patent and Trademark Office (USPTO), a trademark is presumed abandoned after 3 consecutive years of non-use. However, if an owner decides to resume the use of a trademark after such a period, they may petition to revive the mark based on certain criteria and evidential support.

Steps to Revive an Abandoned Trademark

1. Assess the Status of the Trademark

The first step is to verify the status of the trademark in question by searching the USPTO's records. If the trademark has been declared abandoned, the records will indicate this status and provide the reasons for the abandonment, such as failure to file a required Declaration of Use (Section 8 Affidavit) during the registration maintenance windows.

2. Determine the Reason for Abandonment

Understanding why the trademark was abandoned is crucial. If it was due to non-use, you must be prepared to demonstrate that the non-use was temporary and that there was an intention to resume use. If the abandonment was due to not responding to an Office Action or failing to file required maintenance documents, the approach might be slightly different.

3. Filing a Petition to Revive (if applicable)

If the abandonment was due to failure to respond to an Office Action or failure to file a required document during the registration process, a Petition to Revive may be filed. The petition to revive must be filed not later than two months after the issue date of the notice of abandonment. If the notice of abandonment was not received, the petition must be filed not later than two months after actual knowledge of abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned.

In terms of evidence, the applicant must show to the satisfaction of the Commissioner that the delay was unavoidable. If the evidence establishes that a proper party signed the response, the Director will grant the petition and instruct the examining attorney to review the response. If the response was signed by an unauthorized party, the Director will find that the application should have been abandoned for failure to respond, and the petition will be construed as a petition to revive under 37 C.F.R. § 2.66.

The granting of the petition does not extend the time for filing a notice of appeal or filing a petition to review the examining attorney’s action under 37 C.F.R. § 2.63(a) and (b). 15 U.S.C. § 1062(b); 37 C.F.R. § 2.142(a). Therefore, in most circumstances, if the response does not overcome all outstanding refusals or satisfy all outstanding requirements, the application will again be abandoned and an “Abandoned Due to Incomplete Response” notice will issue

4. Proving Intent to Resume Use

To successfully revive an abandoned trademark, you must prove that any period of non-use was unintentional or due to special circumstances that prevented the use of the trademark. Documentation and evidence supporting this might include:

• Financial Records: Showing continued investment in the brand, such as advertising or product development expenses during the period of non-use.
• Marketing Materials: Demonstrating efforts to maintain public recognition of the trademark, even if products or services were not actively being sold.
• Correspondence: Letters, emails, and other communications related to efforts to continue using or license the trademark.
• Legal Documents: Contracts or agreements entered during the non-use period that indicate plans for future use of the trademark.

5. Resuming Use of the Trademark

Actual resumption of use is a necessity. You must provide evidence of the trademark’s use in commerce again, which involves submitting specimens showing the trademark as used on goods or in connection with services. This proves to the USPTO that the trademark is active and functions as a source identifier in the marketplace.

6. Overcoming Potential Opposition

Be prepared to face opposition from other parties who might have begun using a similar mark during your period of non-use. They may have common law trademark rights based on their use that could challenge your revival. Legal advice is crucial here to navigate potential conflicts.

7. Monitoring and Maintenance

Once revived, the trademark must be maintained properly. This includes regular use in commerce and filing all required declarations and renewals with the USPTO. Failing to adhere to these requirements can lead to another abandonment.

Legal Considerations and Advice

It’s advisable to consult with a trademark attorney who can provide specific guidance tailored to the circumstances of your case. They can assist in preparing and filing petitions, gathering and submitting evidence, and potentially defending the trademark against challenges from other parties.

Conclusion

Reviving an abandoned trademark involves careful planning, strategic evidence collection, and precise documentation to demonstrate the intent and action toward resuming its use. While the process can be complex, successfully reviving a trademark can reclaim valuable intellectual property assets and strengthen a brand’s market position.