A common question that we are asked is whether a trademark owner should continue to hang onto a mark that they are no longer using in their business. More often a trademark owner would like to retain ownership even thought they are no longer using the mark.
A business owner or brand may stop using a trademark for a variety of reasons; most commonly that the product or service the trademark represented is no longer offered or that the company is no longer in existence. But trademarks are different from, say, domain names where people tend to register a variety of URLs that they like and hang on to them for years “just in case.” That’s because:
When It Comes to Trademarks, If You Don’t Use It, You Lose It.
In the United States, a trademark must be used in commerce for it to retain its rights. Once registered and trademark owner must submit proof of using the trademark between the fifth and sixth years after registration. Thereafter, from the ten year point after registration and every ten years after that, a trademark owner is required to renew the mark with the United States Patent and Trademark Office where use of the mark must be proved.
Sometimes people wonder if they can just renew the mark and perhaps submit evidence that would make it appear as though it is still in use. While that may work to secure your renewal, if you are caught, the mark will be canceled, and you may find yourself facing charges of fraud.
What Should I Do with a Mark I’m No Longer Using?
Trademark owners have three options when it comes to dealing with a mark that they are no longer using in the course of their business. They are as follows:
- Abandon the Mark – Simply stop using the mark and do not renew your registration when the time comes. Or you may expressly abandon it.
- Sell the Mark – A Trademark is an asset that can be sold in the course of business. The value of the mark, however, will depend on a variety of factors, including the goodwill of the business selling the mark.
- License the Mark – Licensing your mark to others is considered usage and you can earn money in the form of licensing fees by going this route.
If you are considering selling your mark or licensing your mark, be sure to work with a trademark attorney from the very start of the process. Even simple mistakes in this area could result in a loss of value for the mark, disgruntled buyers or licensees, and less money in your pocket.
If you have questions about dealing with a mark that you are no longer using in your business, please feel free to contact us at 888-666-0062 to schedule an appointment.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.