A trademark may either be “alive” or “dead.”
In theory, a trademark may be maintained in perpetuity, as long as it’s being used. For example, the Löwenbräu lion has been used as a trademark since 1383.
The oldest US trademark still in use today is a depiction of the Biblical figure Samson wrestling with a lion, used by Samson Rope Technologies, Inc. and first registered in 1884.
If a business stops using a mark, the mark is considered “abandoned.” A trademark application can also be abandoned if the applicant fails to follow through with the application.
Under the federal Lanham Act (which governs trademarks), non-use for three consecutive years is considered prima facie evidence of abandonment. However, this is a rebuttable presumption. The burden will shift to the original owner of the mark to prove that it either did use the mark or intended to resume using it during the three years.
Effective July 8, the US Patent and Trademark Office (USPTO) has clarified deadlines for reviving seemingly-abandoned trademarks and applications.
If the owner of the mark (or the applicant) received a notice from the USPTO that a mark or application was deemed abandoned, the owner or applicant must file a petition or request to revive it within two months.
If the owner of the mark didn’t receive such a notice, then a petition or request must be filed within six months of the date when the application or registration was abandoned.
This six-month deadline can be waived if the owner or applicant can show “extraordinary circumstances.” However, according to the USPTO, “oversights and inadvertent errors that could have been avoided with the exercise of reasonable care are not considered to be extraordinary situations.”
For example, a change of attorneys or a lack of awareness of USPTO rules isn’t considered an “extraordinary circumstance.”
Once a mark or application is abandoned by the original applicant, unless it’s revived it can be claimed by a new applicant.
More guidance is in the Trademark Manual of Examining Procedure.
