You worked hard to get your business up and running, and may have spent years establishing your brand. But there may be times when you might abandon a trademark — purposely or inadvertently — or you may wish to use one that was once owned by another. There are two primary ways in which a trademark can be abandoned — through nonuse or by failing to move your USPTO application forward. Importantly, once a trademark is deemed “abandoned,” it no longer has the protective rights granted by the Lanham Act.
What is an Abandoned Trademark?
A trademark must be continuously used in commerce for you to retain your rights to it — if you fail to do so, the mark may be deemed abandoned. Otherwise, trademark protection can ultimately last indefinitely, as long as it is maintained. Trademark abandonment occurs when the owner has not used the mark and has no intention to resume use. Abandonment can be inferred based on the circumstances surrounding the nonuse. If a mark has not been used for three years, this may be considered prima facie evidence of abandonment. If you can demonstrate that you intend to resume use of the mark through advertising or distribution, you may be able to rebut the nonuse presumption. In addition, nonuse may be excused if you can show proof that you had no control over the circumstances leading to the nonuse. Other common causes of trademark abandonment may include:
Improper assignment of the mark
The mark has become generic
Inability to maintain adequate control over a licensed trademark
Failure to take measures to prevent unauthorized use of the trademark
A trademark can also be abandoned before it has been registered. A USPTO application may be deemed abandoned if you did not file a response to an office action response, an Extension of Time, or a Statement of Use. In these cases, the USPTO will notify you that your application has been relinquished by sending a Notice of Abandonment. However, you may still have the option to revive your abandoned application.
How to Revive an Abandoned Trademark
In the event that you inadvertently abandoned your trademark application, you may be able to file a petition to revive it if certain conditions are met. When the USPTO sends a Notice of Abandonment, you only have two months from the date marked on the notice to respond. However, if you did not receive the notice, you have up to six months from the date of abandonment to file a petition. If you are outside the time frame to file a petition, you will need to begin the registration process over again. When a trademark itself is abandoned, you could regain some of the protective rights it once had simply by beginning to use it again in commerce. But in doing so, you will only have limited protections and it can be much more difficult to assert your ownership in an infringement action. If you plan to resume using the mark and define your brand with it, you should strongly consider re-registering it with the USPTO.
Can You Register an Abandoned Trademark?
With countless trademarks being filed year after year, it is becoming more difficult to register an original mark. In this case, you might consider trying to register a mark that has been abandoned. But even if another entity abandoned their trademark application, claiming the mark as your own may not be as easy as you would expect. Significantly, the other business might still have common law rights if they continue to use the mark. It is also essential to be aware that there might also be a specific reason for the abandonment. Perhaps it was likely to be confused with another mark, or the application would have been rejected based on other grounds. It is crucial to keep this in mind when considering whether you want to move forward with registering an abandoned mark. Nevertheless, if you wish to register an abandoned trademark, you will be required to file a new application and start the process from the beginning — it is not possible to simply pick up where the abandoned application left off.
Contact an Experienced Trademark Attorney
If you are looking to register an abandoned trademark, a skilled trademark attorney can provide you with the counsel you need to make decisions that are in the best interests of your company. The attorneys at the Trademark Lawyer Law Firm, PLLC have extensive experience handling trademark matters and can guide you through the process of filing a petition to revive your mark or provide specifically tailored guidance for your company. Located in Ann Arbor, Michigan, we work with business owners nationwide and are dedicated to providing comprehensive representation. Contact us today for a free 15-minute consultation.
Common Questions About Reasons DIY Trademark Searches Can Be Risky
Before we move forward with using or applying for a trademark, we need to approach the search process with care. A quick online search might seem like a good starting point, but relying solely on do-it-yourself methods can leave us exposed to unnecessary risks. Without the right tools and knowledge, we may overlook key issues that affect the strength and availability of our mark. That’s why it’s often helpful to consult with a trademark lawyer early in the process.
What Are The Risks Of Doing A Trademark Search Without Legal Help?
When we handle a trademark search on our own, we might miss key factors that professionals are trained to spot. Trademark protection depends on more than just identical names—it includes sound-alike marks, similar meanings, and industry overlap. If we don’t understand how trademark law defines likelihood of confusion, we could choose a name that puts us at risk for rejection, rebranding, or even legal disputes.
Can A Basic Online Search Miss Important Trademark Conflicts?
Yes, it can. Many people assume that if a name doesn’t appear on Google or social media, it’s safe to use. But the USPTO database contains thousands of registered and pending trademarks, and many of them don’t show up in general online searches. A mark could be in the system but inactive on the web—or registered for a different type of product or service than what we're searching for. Overlooking those conflicts early can lead to setbacks and unexpected expenses later.
Why Isn’t A Google Search Enough To Clear A Trademark Name?
Google searches return public-facing content, not legal trademark records. Two businesses may use similar names in different regions or industries, and one may already have legal rights through common law use or a federal registration. A name that looks available on Google might still be registered and protected in a way that could block us from using it. That’s why we need more than a search engine when making a long-term branding decision.
How Does A Professional Trademark Search Differ From A DIY One?
Our IP attorney will share that a professional search goes beyond just checking if a name exists—it evaluates how strong and protectable that name actually is. A trademark lawyer can analyze phonetic similarities, market overlap, and even industry trends that affect registration. They also review results using legal criteria the USPTO uses during the application process. This kind of insight helps us avoid filing for a mark that’s likely to get rejected or challenged.
What Are The Legal Consequences If I Miss A Similar Trademark?
Missing a similar or confusingly close mark can lead to serious consequences. The USPTO might deny the application outright, costing us time and money. If we’ve already launched the brand, we could receive a cease-and-desist letter, face litigation, or be forced to change the name after building a presence. That kind of disruption affects more than branding—it can impact reputation and business continuity. It’s much safer to identify these conflicts early with the right support.
Avoiding Costly Mistakes With Professional Support
A trademark search isn’t just a formality—it’s a key step that can influence the direction of our brand. Taking shortcuts during this process may feel like a way to save money, but it often creates more problems than it solves. When our intellectual property lawyer approaches the search with legal insight, we reduce the risk of rejection, conflict, and lost business. Working with a trademark lawyer gives us peace of mind that our brand is starting on the right path. For those considering this important step, our team of trademark attorneys at Trademark Lawyer Law Firm can offer guidance every step of the way, we have over 7,000 successfully registered trademarks. Call today, we offer 24/7 availability.
"I have dealt with Trademark Lawyer Law Firm, PLLC, for several years. This time I needed to have my trademark renewed within a week as a deadline was approaching. As always, they prepared the paperwork professionally and in an expedited manner. Our communication to confirm details was smooth and quick. In a matter of days, they submitted the trademark renewal request. The service of this group of professionals is excellent." O. Garcia
Trademark Lawyer Law Firm
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Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
What are Disclaimers for Trademarks?
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.
What is the Supplemental Registry?
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
What is the Date of First Use?
Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
What is the Renewal Timeframe for a Trademark?
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
Meet Your Team
J.J. Lee
Principal and Founder
Erin C. Bray
Trademark Attorney
Experienced Trademark Attorneys Committed to Protecting Your Brand
Founded by J.J. Lee, the Trademark Lawyer Law Firm, PLLC has successfully registered more than 6,500 trademarks with the USPTO. Dedicated to ensuring that your mark is protected from misuse or theft, our attorneys and staff work closely with clients, taking the time to understand the specific needs of their businesses. Professionally handling each matter with integrity, efficiency, and the personalized attention it deserves, you can rest assured that you have a team on your side who is committed to safeguarding your unique brand.
