What You Need to Know: Trademark Abandonment

Trademark rights terminate if a mark is abandoned. Trademark owners are responsible for maintaining their marks, and their actions, whether voluntary or involuntary, play an important role in preserving those rights. A federal trademark application or registration may be abandoned if the owner voluntarily withdraws the application, or if the owner fails to satisfy required filing obligations during the application process or by renewal deadlines. 

Trademarks can also be deemed abandoned for other reasons, including naked licensing, nonuse and genericide. 

Abandonment by Naked Licensing 

Trademark owners can license their trademarks as long as they maintain quality control over the goods and services the mark is connected with. Moore Bus. Forms, Inc. v. Ryu, 960 F.2d 486, 489 (5th Cir. 1992). If a license agreement is not properly worded or if quality control is not maintained, trademarks can be abandoned through a legal doctrine called “naked licensing.” When a license is considered “naked,” courts treat it as an involuntary abandonment of the trademark. A lack of control on the part of the licensor can result in customer confusion among different qualities of goods under the same mark. Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir. 1991).

Courts look to see whether the license agreement has “provisions restricting or monitoring the quality of goods or services” when determining whether naked licensing has occurred. FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 516 (9th Cir. 2010). Courts also look to the licensor’s actual control and whether the licensor was reasonable in relying on the licensee to maintain the quality of the goods or services. Id. at 512 n.1. If the two companies have had a long licensing relationship without issues, courts are more likely to find that the licensor can reasonably rely on the licensee to maintain quality. Lawn Managers, Inc. v. Progressive Lawn Managers, Inc., 959 F.3d 903, 909 (8th Cir. 2020). Once a mark is abandoned through naked licensing, the trademark owner loses its exclusive rights to the mark and it becomes available for others to use. 

Abandonment by Nonuse 

The Lanham Act dictates that “a mark shall be deemed to be abandoned if … its use has been “discontinued with intent not to resume such use.” 15 USCS § 1127. To maintain a trademark registration, the owners must have a bona fide use of the mark in commerce as opposed to use “merely to reserve a right in a mark.” Id. As a result, unexcused or extended nonuse of a mark can lead to abandonment of trademark rights. A trademark is presumed abandoned if it has not been used in three years and the trademark owner has not taken steps to demonstrate its intent to continue use of the mark. 

Third parties can file a petition to cancel a trademark registration with the USPTO or federal court based on an owner’s nonuse of the mark. The owner has the burden of proving that the mark was used. However, the nonuse abandonment inquiry is nuanced, and use can be shown through maintained domain names, licensing and limited use. For instance, when Twitter rebranded to X, they “shift[ed] traffic from twitter.com to x.com” and have maintained Twitter’s trademarks because they still have immense value. In some cases, minimal use can be sufficient, but there is no clear line as to how much use is required. There are also examples of excusable nonuse beyond the owner’s control, such as trade embargos or natural catastrophes. However, ordinary business challenges, such as a general economic downturn, or rebranding, generally do not qualify as excusable nonuse.  

Plaintiffs must prove abandonment by the stringent clear and convincing standard because important property interests are at stake. Dialogo, LLC v. Santiago Bauza, 467 F. Supp. 2d 115, 128 (D. Mass 2006). 

Abandonment by Genericide

Trademarks can be abandoned when the mark becomes synonymous with the product (“generic”) and loses its significance as a mark and fails to identify the brand. 15 U.S.C. §1127. Generic marks cannot be registered in the first place, but sometimes marks can become generic over time. A trademark becomes generic “‘when the primary significance of the registered mark to the relevant public’ is as the name for a particular type of good or service irrespective of its source.”  Elliott v. Google, Inc., 860 F.3d 1151, 1156 (9th Cir. 2017) (quoting 15 U.S.C. § 1064(3)). Genericide is a form of trademark abandonment because the owner allowed the distinctive mark to lose its primary source-identifying power.  For instance, Aspirin, Escalator, Cellophane, Thermos, Yo-Yo, and Zipper are all marks that have been abandoned through genericide. However, the U.S. Court of Appeals for the Ninth Circuit found that the “Google” mark had not become generic for internet searching just because it was commonly used as a verb. Elliott v. Google, Inc., 860 F.3d at 1163.

Courts look to consumer surveys, publications, dictionaries and consumer usage for evidence of genericide. In order to defend against genericide, brands can take affirmative steps to confirm the status of their marks as source identifiers. For example, band-aid puts “Band-Aid® Brand Adhesive Bandages” on all their products to distinguish their products from other adhesive bandages. Trademark owners must also consistently monitor and enforce their trademark rights in order to prevent genericide. It is not enough to secure a trademark registration; an owner must monitor and control how the public uses its mark and take appropriate action against infringers to prevent consumer confusion and protect the brand’s reputation. If a trademark owner fails to police its mark, it risks diluting the brand or losing its rights through abandonment.  

Brand Value

Trademarks can last indefinitely if they are properly maintained and defended, and in some cases they can even outlast the brand in the marketplace. For instance, when a company rebrands, the old reiteration of the brand can remain valuable, especially if consumers still associate the old trademarks with the new brand.

If you have temporarily stopped use of a mark, but do not intend to abandon it, you should take affirmative steps such as filing timely submission of maintenance documents with the USPTO and making sure that you can show sufficient bona fide use of the mark. We are available to counsel on avoiding abandonment. We also offer trademark watch services for our clients to ensure registered marks are monitored and enforced.  For further reading from our website on the topics discussed here, see the following insights and IP Bits & Pieces®: What Trademark Owners Need to Know in 2025: Tariffs and Excusable Nonuse of Trademarks, Transferred Trademarks: Assignment in Gross Explained, Trademarks and Co-Ownership, A New Year’s Warning Worth Repeating Regarding Trademark Scams and our Trademark FAQs.