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There is a service that has the same name I plan to use in an app; however, the servicemark was filed on Jan 23 of 2007 and abandoned on March 26 of 2008.
Since the (single member) LLC that owned it abandoned it, am I allowed to use the SM due to public domain, abandonment, etc.?
Under US trademark law, a registration of a mark can be declared abandoned if it has not been used in commerce for more than three years.
A person or entity who wants to use the mark can file to register the mark in his/her/its own name, and then petition to have any former registration canceled.
If the mark was formerly in use but never registered, one can simply include thar fact in an application for a new registration, showing that there is no current use, old use having been discontinued.
15 U.S. Code § 1064 - Cancellation of registration provides that:
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
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(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title ...
15 U.S. Code § 1059 - Renewal provides:
(a) Period of renewal; time for renewal
Subject to the provisions of section 1058 of this title, each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application, in such form as may be prescribed by the Director. Such application may be made at any time within 1 year before the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a grace period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor. ...
15 U.S. Code § 1052 - Trademarks registrable provides that:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
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(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive..
15 U.S. Code § 1127 provides in relevant part:
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark ///
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A mark shall be deemed to be “abandoned” if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
Proving Abandonment: How Trademark Rights Can Be Lost Through Non-Use from the National Law Journal reads:
Section 45 of the Lanham Act states a trademark is considered abandoned when “its use has been discontinued with intent not to resume such use.” Abandonment may be inferred from the surrounding circumstances, but proof of non-use for three consecutive years is prima facie evidence of abandonment. Since use of a mark must be bona fide and registration cannot be used to reserve rights in a mark (apart from intent to use applications), a challenger seeking to cancel a registration on the basis of abandonment must either provide evidence of three consecutive years of nonuse or prove (1) the respondent discontinued use, and (2) the respondent intended not to resume use.
In Ross Bicycles LLC v. Century Sports, Inc., Cancellation No. 92067406, 2020 TTAB LEXIS 128 (T.T.A.B. Mar. 27, 2020), the challenger filed a petition to cancel the mark ROSS for “bicycles and structural parts thereof.” There were many evidentiary objections, and ultimately, the TTAB’s decision was based merely on oral testimony and one screenshot from a website selling a bike with the ROSS mark. The TTAB concluded that the reliable oral testimony presented by the challenger established a prima facie case of abandonment because the mark was shown to not have been used in commerce during the period of at least July 2013 through November 2017, which corresponded to the time period between when the trademark owner acquired the mark and when the petition for cancellation was filed. Additionally, there was no evidence that the owner intended to resume use of the mark. The Board, therefore, granted the cancellation petition and cancelled the registration on the basis of abandonment.
In contrast, the TTAB declined to find abandonment in My Organic Zone v. Shawgo, Cancellation No. 92068377, 2020 TTAB LEXIS 123 (T.T.A.B. Apr. 10, 2020). There, the Respondents owned a registration for the mark “Organic Zone” for online retail store services and café-restaurants featuring both food and clothing. The Petitioner filed a petition to cancel on the grounds of abandonment, arguing the mark was not used in commerce for at least three years, since April 2015. The TTAB found that the evidence did not establish any period of nonuse, and therefore, the mark was not abandoned. The evidence on which the TTAB based its decision was the Respondents’ interrogatory responses, which showed the registered mark was still in use in commerce and had not been discontinued for any period. The trademark owner came forward with specific information regarding prior and current use of the mark, as well as showed product offerings that used the mark.
Most recently, the TTAB considered abandonment of the CHICLETS trademark in Retrobrands USA LLC v. Intercontinental Great Brands LLC, Cancellation No. 92066647, 2020 TTAB LEXIS 239 (T.T.A.B. May 29, 2020). Retrobrands filed a petition for the cancellation of the Chiclets trademark registrations on the grounds of abandonment, arguing that the marks had not been used in the United States for a period of at least three years. Retrobrands is in the business of relaunching formerly famous, now abandoned brands, and it filed an application for registration of the mark CHICLETS for chewing gum; this gave Retrobrands standing to petition for cancellation of the mark.
Since 1900, Chiclets branded gum has been sold in the United States; various companies have acquired the Chiclets brand over the years, and most recently in 2011, it was acquired by Mondelēz, of which the Respondent is a part. It was undisputed that Mondelēz North America sold Chiclets branded gum through March 2016, when it decided to discontinue sales of Chiclets in the United States; the Respondent presented evidence that sales continued through the end of 2016. During 2016 and 2017, Mondelēz Exports, another division of the Mondelēz family considered whether to continue sales of Chiclets branded gum. Petitioner filed the petition for cancellation on August 9, 2017. Mondelēz Exports began distributing Chiclets gum in the United States by April 2018, after entering into an agreement with a distributor to import and sell the products. Evidence of sales since 2018 led the TTAB to conclude that the sales were not “token” sales. Based on these facts, the TTAB found that the Petitioner did not establish three years of nonuse, and therefore, did not establish prima facie abandonment. Nevertheless, because there was a period of nonuse from approximately January 2017 through April 2018, the Petitioner could still show abandonment if it could prove that the Respondent intended not to resume use of the mark.
In an effort to meet its burden, the Petitioner presented evidence that the Respondent had not done any advertising or marketing to promote the product since 2015. The TTAB found this evidence showed that only one member of the Mondelēz family decided to discontinue selling Chiclets branded gum, not that the entire family of companies intended not to resume use. The Petitioner also showed product lists and customer service emails showing the Chiclets branded gum had been “discontinued.” The TTAB again found this evidence was limited to Mondelēz North America, not the entire family of companies. The TTAB concluded that the Petitioner did not meet the burden of establishing that the Respondent did not intend to resume use of the mark; therefore, the registration was presumed valid. The TTAB considered the Respondent’s evidence, even though it did not have to, and found that there was an intent to use the mark based on the fact that another member of the Mondelēz family considered taking over the Chiclets branded gum by at least January 2017, and ultimately began distributing the product again in April 2018.
These cases illustrate that a prima facie case of abandonment is easily establish upon a showing that a mark was not in use in commerce for at least three years. If such evidence of consecutive non-use is unavailable, it becomes much more difficult to prove abandonment. To carry its burden, a challenger must show not only that the trademark owner discontinued use of the mark, but also that the respondent intends not to resume use of the mark.
Yes. A mark must be actively used in order maintain a claim on that mark. As you said, this particular mark you're interested in has not been in use for 14 years.
