trademark | The Trademark Firm

It’s an interesting paradox that some poor choices as trademarks can be closely related to excellent marks. Probably the #1 reason we give negative opinions on trademark searches, and the #1 reason for trademark rejections by the trademark office, is that the proposed mark is descriptive.

A descriptive mark, or as the trademark office likes to call them, marks that are “merely” descriptive, are marks that “merely” describe the goods and services. Because they are descriptors of the kind of the goods, they can’t serve as identifiers of the source of the goods. Therefore, they can’t act as trademarks or service marks, because the purpose of marks is to assure the public of the provider of the goods, not the nature of the goods themselves.

A question that comes up with some regularity in our practice goes something like this; “So-and-so has stopped using their trademark, can I file a registration application for, and use, that same mark now?”

A well settled point of trademark law is that a mark must be used in commerce to be maintained, or else it is abandoned. (Read more about trademark abandonment in our post here). And a gap of three years or more of not using a trademark in the United States will create a presumption that the mark has been abandoned. But the clarity ends there, because in the U.S., the issue turns not always on time, but on “intent.” If a trademark owner “intends” to stop using a mark, the time becomes irrelevant, and the mark would be immediately considered abandoned. But what if the use of a mark simply ceases, at least for a while, and the mark owner, either actively or passively, suggests that they intend to resume the use of the mark.

Good and Bad Marks Can Be Closely Related

Trademark Abandonment – How long is long enough?