United States trade mark law generally provides that a registered mark is considered abandoned if its use has been discontinued for a specified period with intent not to resume such use. Specifically, non-use of a mark for a period of three consecutive years constitutes prima facie evidence of abandonment of the mark.
Based on this presumption, often when parties are conducting a trade mark clearance search to ascertain whether a particular mark is available for use, they will rely on the fact that a third party registration for the identical mark has been cancelled as a basis for concluding that the third party has abandoned its rights in and to the mark and that, therefore, the mark is now available to be used free and clear of claims of priority from the original owner.
However, the fact that a trade mark owner has allowed its registration for a mark to be cancelled does not necessarily mean that rights in and to that mark have been abandoned. US courts have recently addressed the issue and confirmed that the cancellation of a federal trade mark registration does not, by itself, constitute abandonment of the owner's common law rights in and to the mark; nor does it establish the owner's lack of an intent to resume use of the mark.
The presumption that a mark has been abandoned after three years of non-use can be rebutted by the trade mark owner through a showing of evidence that there was an intention to resume use. Moreover, evidence regarding the trade mark owner's practices that occurred both before and after the three-year statutory period can be considered by a trade mark tribunal when determining whether the owner had an intention to resume use. An intent to resume use cannot merely be an intention not to abandon the mark but, rather, must include plans to resume commercial use of the mark, including, for example, continuing efforts to license the mark and extensive research and development into a product to be offered for sale under the mark.
Therefore, even if a party may have had its trade mark registration cancelled and may not have used its mark for a period of three years, it still may be in a position to enforce common law rights in the mark against a party that subsequently adopts a confusingly similar mark. In view of the recent position taken by US trade mark tribunals, when conducting a trade mark clearance search, a party should give proper consideration to a cancelled registration for a confusingly similar mark. Accordingly, it is recommended that when conducting trade mark clearance, a party should search not only the records of the USPTO but also undertake an appropriate common law search to ascertain whether there is actual or intended future use of the mark by the previous registrant.
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| Karen Artz Ash and Bret J Danow |
Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com