When you search for intellectual property in your business, you may find existing trademarks that belonged to a prior business you bought out. This can happen in acquisitions, and there may be a trademarked property you will want to recycle to help bring a sense of familiarity to past customers.
But if you have waited a number of years to use that trademark, you might have to deal with the legal concept of an abandoned trademark. Take a look at what might happen if you discover a trademark after several years and what you can do to help make it active again.
When a Trademark is Officially Considered Abandoned
If it has been three years since the trademarked property was used, the trademark will be considered abandoned. That is going by the assumption the trademarked property is not necessary to help promote the brand of a business. This will not apply, however, if the trademarked property was still being used intermittently, as in seasonally.
In the unusual situation where your business finds an unused trademark property you want to use, you will have to prove to the U.S. Trademark Office that you do not want it abandoned.
Proving Lack of Abandonment
You can present evidence to the U.S. Trademark Office showing that you are beginning to use the trademark in the selling of your products. They will take this into account if you can show that the trademark is beginning to be used in advertising or in other methods to sell your goods and services. If you can prove you had intent to reuse the trademark within that three-year window, you can sometimes retain use of the trademark.
In the situation where you have just discovered the trademark after three years, then you still have good chances of winning. Consideration will be given to businesses that had an abandoned trademark but could not use it due to factors beyond their control. An acquisition or other issue that prevented the use of the trademark can easily be proven with documents.
Improper Uses of the Trademark
Had your business been using the prior trademark in a way that did not pertain to its prior use, it could hurt your case of keeping it active. Sometimes referred to as “naked licensing,” improper use of a trademark that does not relate to the goods and services it represents will be deemed automatically abandoned. The same can apply if you knew about the trademark and did nothing to police it from losing its uniqueness due to similar creations.
Be aware that if your business decides to alter the graphics or text of the trademarked property, it can automatically make the prior trademark useless without needing to re-register. Some minor changes are usually allowable as long as it does not completely remove the familiarity of the trademark that everyone once knew.
If you need help obtaining trademarks for your business, consider us here at Traklight to help you through this protracted process. We will help you scope out all your intellectual property and help you find trademarks that can be registered anew or perhaps re-used if you have just bought out another business.
Contact us for details on our services, including intellectual property searches, storage protection for your property and providing resources to help keep you in the know.