Hey, Don’t Abandon Your Mark

US trademark law requires any mark owned by a US entity to be in use on all of the goods before registration thus proof of use must be filed and accepted by the US Trademark Office before a registration will be issued. In contrast to US entities foreign owned entities may apply for a US mark without having used the mark under section 44(e) or the Trademark Act and section 66(a) under the Madrid Protocol.

“Although non-US applicants can register a mark without proving use, they cannot maintain the registration without engaging in use.

Between the fifth and sixth year after a registration issues, all registrants must file a Section 8 Affidavit of Continued Use with specimens of use for each class in the registration and must delete from the registration all individual goods and services that are not currently being offered under the mark in the US. This exercise must be repeated ten years after the registration has issued and every ten years thereafter.”

So, what do you do if you are a foreign entity and you don’t want to abandon your mark?

A mark will be deemed abandon after three consecutive years of nonuse. Under Section 45 of the US Trademark Act, a mark will be deemed to be “abandoned” when use of the mark has been discontinued with the intent not to resume such use, and intent not to resume may be inferred from the circumstances.

In reading the USPTO application you may assume you have up until the fifth and sixth year to use your mark, you don’t. The best practice is to begin using your mark within three years.

What is Use?

The level of “use” necessary to satisfy this threshold must be a bona fide use of the mark in the “ordinary course of trade” for the specific industry in question, and cannot be a use, such as a token use, made merely as an attempt to reserve a right in a mark.

How long is ‘three years’?

Nonuse of a mark for less than three years combined with an intent not to resume use is also sufficient to support a finding of abandonment but generally the three year tolling period begins with the date of first registration.

Source: Use It or Lose It: When Can a Trademark Registered Under Section 44(e) or 66(a) Be Deemed “Abandoned” in the US? Susan Neuberger Weller

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