Abandoned Trademarks

If the owner of a mark has not used the mark for at least 3 years and doesn’t have an intent to resume use, then it likely has been legally abandoned and is essentially up for grabs to whoever uses it first.

Under the Lanham Act, 15 USC 1127, a trademark is deemed “abandoned” when “its use has been discontinued with intent not to resume such use.” Intent not to resume may be inferred from circumstances. Non-use for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

In a practice called “zombie trademarks,” some businesses specifically search for abandoned trademarks that still have marketing potential through public recognition, register the mark, and typically license the IP rights out to another company to actually use the branding. This is completely legal when done within the bounds of the Lanham Act. Once a mark is abandoned it is essentially returned to the public domain, and available on a first-use basis.

Originally published at https://www.lawbylevin.com on September 16, 2020.