United States: Avoid Inadvertent Abandonment Of Your Trademark

Last Updated: February 19 2013
Article by Shoko Naruo

One of the challenges trademark owners face in maintaining their trademark is the risk of inadvertently abandoning their trademark when there is some period of non-use of the mark. Unbeknownst to many trademark owners, abandonment of a trademark can easily happen due to matters of ordinary practice, such as a temporary cessation of production, a failing product line, or low level of sales.

The Lanham Act, which is a federal trademark law, provides that abandonment of a trademark occurs when (1) the legal owner ceases to use the mark (non-use), and (2) the owner lacks intent to resume use of the mark in the reasonably foreseeable future.1 As demonstrated below, the key to securing the rights to a registered trademark with the United States Patent and Trademark Office is to continue using the mark, and, possibly more importantly, to preserve evidence that the owner intends to resume use of the mark, if for any reason they cease use of the mark.

What Constitutes Non-Use?

The determination of non-use occurs on a case-by-case basis and is often confusing for trademark owners. Some courts (mainly Ninth Circuit and California district courts) offer a bright line rule that even a single instance of use prevents abandonment if such use is made in good faith. For example, in Electro Xource, LLC v. Brandess-Kalt-Aetna Group, Inc., the Ninth Circuit held that the Lanham Act requires complete discontinuance of use for abandonment.2 On the contrary, other courts have held that token use or sporadic use is not a bona fide use under the Lanham Act.3 For example, in Continental Grain Co. v. Strongheart Products Inc., the Trademark Trial and Appeal Board held that token annual sales of KIT KAT cat food for the purpose of maintaining trademark rights was sufficient to warrant a finding of abandonment.4 Similarly, in Del-Rain Corporation v. Pelonis USA, Ltd., the Second Circuit held that low-level sales, such as sales of the remaining stock of an abandoned line of merchandise, do not constitute a bona fide use in the ordinary course of trade that suffices to defeat a finding of abandonment.5

Courts do not have a uniform approach to determining what constitutes non-use; however, they have been consistent in putting great emphasis on the trademark owner's intent. As discussed below, a trademark owner may be able to avoid abandonment by proving his or her intent to resume use of the trademark.

Intent to Resume Use of the Mark: Is Objective Evidence or Subjective Evidence Required?

Interestingly, courts tend to prevent abandonment when the trademark owner can provide objective evidence that the owner intends to resume use of the mark. Even courts that seem lenient in finding non-use due to low level of sales prevent abandonment of the mark when the owner shows such intent.6

Note that the majority of courts now require the trademark owner's "intent to resume use" rather than "intent not to abandon" to prevent abandonment of the mark.7 In the landmark case Exxon Corp. v. Humble Exploration, the Fifth Circuit explained that "stopping at an intent not to abandon tolerates an owner's protecting a mark with neither commercial use nor plans to resume commercial use. Such a license is not permitted by the Lanham Act."8

To prove a trademark owner's intent to resume use of a mark, the trademark owner needs to present objective evidence. Objective evidence includes actual and concrete plans to resume use in the reasonably foreseeable future. On the other hand, self-serving subjective evidence, such as the owner's self-serving testimony that he or she never had any intent to abandon the mark, would not suffice.9 If courts look solely at the owner's subjective intent, no mark would ever be held abandoned in contested cases. Courts have repeatedly held that the Lanham Act was not intended to provide a warehouse for unused marks.10

Understanding the concept of abandonment of a trademark is crucial as abandonment may easily happen once the mark is not used for any reason. For the purposes of maintaining your trademark, the most important thing to keep in mind is to preserve objective evidence that demonstrates your intent to resume use of the mark, regardless of the period of non-use of the mark.


1. 15 U.S.C. § 1127.

2. Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006).

3. See Metropolitan Life Insurance Company v. O'M & Associates LLC, No. 06 C 5812, 2009 WL 3015210 (N.D. Ill. Sept. 16, 2009); MB Financial Bank, N.A. v. MB Real Estate Services, L.L.C., No. 02 C 5925, 2003 WL 21462501 (N.D. Ill. June 23, 2003).

4. Continental Grain Co. v. Strongheart Products Inc., 9 USPQ2d 1238 (TTAB 1988).

5. Del-Rain Corporation v. Pelonis USA, Ltd., 29 Fed. Appx. 35, 37 (2d Cir. 2002).

6. See e.g., Grocery Outlet v. Albertsons, Inc., No. C 06-02173 JSW, 2008 WL 5245962 (N.D. Cal. Dec. 17, 2008) (finding that the trademark owner did not abandon the mark because the grocery store chain had continued to sell off inventory with the intent to resume use of the trademark within the reasonably foreseeable future); see also Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 537 (4th Cir. 2000); Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010).

7. Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102 (5th Cir. 1983).

8. Exxon Corp., 695 F.2d at 102.

9. Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1330 (11th Cir. 2008); Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 337 (1st Cir. 2004).

10. Imperial Tobacco Ltd., Assignee of Imperial Group PLC v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990); see also AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1550, 1 USPQ2d 1161, 1177 (11th Cir.1986), cert. denied, 481 U.S. 1041, 107 S. Ct. 1983, 95 L. Ed. 2d 822 (1987).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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