Can you lose a trademark by not using it?

Brands go quiet for ordinary reasons: a product line is paused, an artist takes time between releases, a business is restructured. Trademark law cares about those gaps because a trademark exists to identify goods or services that are actually being offered. This page explains when nonuse becomes abandonment, the tools others can use against an unused registration, and what an owner can do to protect a name during a pause. For the basics of how marks are kept alive, see our main copyright and trademark law page.

How a nonuse challenge runs at the USPTO, step by step

1. A petition is filed. Any person can ask the USPTO to expunge or reexamine a registration, paying $400 per class and filing a verified statement that describes the reasonable investigation of nonuse and the evidence found (37 CFR 2.91).
2. The Director decides whether to start. A proceeding is instituted for each good or service where the petition makes a prima facie case of nonuse, and that decision is final and not reviewable. The Director can also start one on the USPTO's own initiative (37 CFR 2.92).
3. The owner gets an office action. The response is due within three months, with a single one-month extension available for $125. With no response, the proceeding ends and the registration is cancelled for those goods or services (37 CFR 2.93(b)(1)).
4. The owner answers with evidence or deletions. Evidence of use must fit the statutory definition of use in commerce, but it is not limited to the specimen formats used in applications, and it must come with a verified statement and a labeled index (37 CFR 2.93(b)(7)). Our page on trademark specimen refusals explains why real-world proof matters.
5. A final action and possible appeal. If the response does not rebut the case, a final action issues, and the owner has three months to request reconsideration or appeal to the Trademark Trial and Appeal Board (37 CFR 2.93(c)).
6. The proceeding ends. The USPTO issues a notice of termination and cancels the registration in whole or in part where appropriate (37 CFR 2.94). If use is proven, no further expungement can be brought for those goods (37 CFR 2.92(d)).

What does "abandoned" mean under federal law?

The Lanham Act gives two definitions. A mark is abandoned when its use has been discontinued with intent not to resume, and that intent can be inferred from the circumstances. Nonuse for three consecutive years is prima facie evidence of abandonment, which means the owner then has to come forward with evidence to show otherwise. A mark is also abandoned when the owner's conduct, including what it fails to do, causes the mark to become the generic name for the goods or services or otherwise to lose its significance as a mark (15 U.S.C. 1127).

The same section defines what counts as use. It must be "bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark." Activity carried out only to hold on to the registration does not meet that standard.

How can someone use nonuse against a registration?

Several procedures exist, with different time windows. Anyone who believes they are harmed by a registration can use the cancellation routes, and the expungement and reexamination routes can be started by any person or by the USPTO Director.

The Board's process for a contested case is laid out on our page about what happens in a TTAB trademark opposition; cancellations follow a similar path.

Even an incontestable registration can be cancelled at any time for abandonment or genericness, because those grounds are carved out of incontestability (15 U.S.C. 1065). And the owner's own maintenance filings test use: the Section 8 declaration due between the fifth and sixth year after registration, and every ten years after that, must either state that the mark is in use or explain excusable nonuse (15 U.S.C. 1058). Our page on trademark renewal deadlines covers those filings.

What if the pause was outside your control?

The Section 8 declaration allows an owner to claim excusable nonuse instead of use. It must show that the nonuse is due to special circumstances that excuse it and not to any intention to abandon the mark (15 U.S.C. 1058(b)(2)). The USPTO's guidance asks for the date of last use, the approximate date use is expected to resume, the reasons for the nonuse and the specific steps being taken to resume. It also says nonuse must generally be temporary, and that decreased demand for a product does not by itself excuse nonuse.

Outside the Section 8 process, the question in a dispute is usually intent. Because intent not to resume can be inferred from circumstances, documents made during the pause, such as product plans, licensing talks, manufacturing quotes or release schedules, can matter later.

Can a mark be lost even while you are using it?

Yes. The second definition of abandonment does not depend on nonuse. If the owner's conduct lets the mark become the common name for the product, or otherwise lose its meaning as a mark, it is abandoned. A registration can be cancelled at any time if the mark becomes generic for some or all of the goods or services (15 U.S.C. 1064(3)), and no incontestable right can be acquired in a generic name (15 U.S.C. 1065(4)). Licensing a brand to others without any control over the quality of what they sell under it is one of the ways owners put a mark at risk, a point the maintenance section of our main page also makes. Our page on why a trademark license needs quality control explains what real control looks like.

What should an owner do during a pause?

• Keep dated records of the last genuine sales, performances or services, and of every concrete step toward relaunch.
• If some goods or services on the registration are no longer offered, delete them. A Section 7 request between maintenance filings costs nothing, and the USPTO expects the register to list only goods and services actually in use.
• Calendar the next Section 8 or renewal window now, and decide early whether you will be declaring use or excusable nonuse.
• Watch the USPTO record for new filings of similar names. Our guide to what to do when someone files for your brand name explains the tools and deadlines.

The same rules work in the other direction. If an unused registration is blocking your own application, the procedures in the table above may clear the way, and our guide to likelihood-of-confusion refusals explains how they fit into a response.

What changes the answer

• How long the gap lasted. Three consecutive years of nonuse is prima facie evidence of abandonment; a shorter gap leaves the challenger to prove intent not to resume (15 U.S.C. 1127).
• Why use stopped. The TMEP lists circumstances that may excuse nonuse, such as a trade embargo, temporary nonuse during the sale of a business, retooling of essential equipment, or illness, fire and other catastrophes. A business decision, decreased demand and use only in a foreign country do not (TMEP 1604.11).
• How the registration was obtained. Reexamination applies only to registrations under Section 1, and the relevant date is the application filing date or, for intent-to-use filings, a date tied to the allegation of use (37 CFR 2.91(a)(2)). The USPTO says Madrid-based registrations can be challenged only through expungement of the two.
• The age of the registration. Expungement petitions run from 3 to 10 years after registration, reexamination within the first 5 (37 CFR 2.91(b)).
• Some goods or all of them. Expungement and reexamination can cancel a registration in part, so a mark in steady use for one product can still lose goods it never covered in practice (37 CFR 2.91(a)).
• Who is doing the selling. Use by a related company, one whose use the owner controls as to the nature and quality of the goods or services, counts for the owner (15 U.S.C. 1055).

A worked example

Common mistakes

• Making a token sale to hold the name. Use made merely to reserve a right in a mark is not use under 15 U.S.C. 1127.
• Leaving never-sold goods on the registration. They invite expungement and audits, while a Section 7 deletion between filings costs nothing.
• Missing the office action in an expungement case. Without a timely response, the goods at issue are cancelled (37 CFR 2.93(b)(1)).
• Answering with a single photo. Evidence needs a verified statement explaining how it shows use as of the relevant date, with a labeled index (37 CFR 2.93(b)(7)).
• Claiming excusable nonuse for a business choice. Falling demand or a decision to pause a line does not excuse nonuse (TMEP 1604.11).
• Filing a petition without documenting the search. The verified statement must describe the reasonable investigation, including each source and how and when it was searched (37 CFR 2.91(c)).

What to do this week

1. Pull the registration in TSDR and note its date, its filing basis and every good and service it lists.
2. If you received an office action in an expungement or reexamination proceeding, write down the issue date and the three-month deadline.
3. For each listed item, gather dated proof of real sales or services, such as invoices, shipping records or web pages with dates.
4. Mark any item that was never sold and decide whether to delete it now.
5. If a registration is blocking you, check its age against the expungement and reexamination windows and record each place you looked for use, and when.
6. Put the next Section 8 window on the calendar so a pause does not run into a missed filing.

Frequently asked questions

Is an abandoned application the same as an abandoned trademark?

No. An application is abandoned when the owner does not respond to the USPTO on time, which is a filing problem (37 CFR 2.65). A mark is abandoned through nonuse with intent not to resume, or by losing its meaning as a mark (15 U.S.C. 1127). Our page on a missed USPTO office action deadline covers the first kind.

Can a Madrid-based registration be challenged for nonuse?

Yes. The USPTO says registrations under the Madrid Protocol can be challenged only in an expungement proceeding, not reexamination. Our page on protecting a U.S. trademark abroad explains how those registrations come about.

Will the owner know who filed the petition?

Not necessarily. The USPTO says the petitioner is not a party to an expungement or reexamination proceeding and, in most cases, the real party in interest can remain anonymous. A TTAB cancellation is different, because the challenger is a named party.

Can a court cancel a registration for nonuse?

Yes. In any action involving a registered mark, a federal court may order a registration cancelled in whole or in part (15 U.S.C. 1119). Our page on a trademark lawsuit in Atlanta federal court explains how those cases run.

Does a band's long break mean the name is abandoned?

Not automatically. The same test applies: whether the name is in use in commerce for the registered goods or services, and whether there is intent to resume (15 U.S.C. 1127). For how artist names are registered in the first place, see trademarking a band or artist name.

Zala IP Law advises owners on keeping registrations in force and handles cancellation and other trademark proceedings for clients across the United States and internationally. If your brand has been quiet, or an unused mark stands in your way, request a consultation or call 404-313-1701.