Loss of Rights

• Jurisdiction: Maryland

V. LOSS OF RIGHTS

A. Abandonment—Voluntary and Involuntary

As the corollary to the notion that trademark rights are acquired through use of the mark, the converse is also true: trademark rights are lost through non-use of a mark, combined with the intent not to resume use. Mere cessation may be justified and not result in abandonment, but it is often hard to identify the intent to discontinue future use. Abandonment is in the mind of the user. One must infer from the former users' actions whether the user had the intent to abandon the mark when it stopped using the mark.⁵⁸ The federal statute⁵⁹ creates a rebuttable presumption that three years of non-use is presumed to be an abandonment, however, a party's actions could evidence an abandonment before that time or could demonstrate a continuing intent to use a mark after three years.⁶⁰ Once abandoned, a mark returns to the public domain and may, in principle, be appropriated for use by others in the marketplace.⁶¹ However, there may be some residual goodwill that will prevent immediate use.

Practice Tip

A business that temporarily stops using a brand, but that wants to renew use in the future, is well served to evidence that it has not abandoned the mark. Good evidence includes periodic file memos indicating that the business intends to restart using the mark in the future. Another tactic to avoid abandonment is to continue some bona fide, and more than token, usage of the mark in connection with the product or service.

B. Genericide

Trademark law uses the term "genericide" to describe when a brand name has lost its ability to designate a source of goods because that mark has become the generic term for the item.⁶² While KLEENEX brand...