Trademark Abandonment – Under section 45 of the Lanham Act a mark will be abandoned under certain circumstances:
(1) When its use has been discontinued with intent not to resume such use.
There are two parts to this element. “Intent” may be an actual statement, or implied by circumstances. What continues a discontinuation of use is tougher to determine by implication, but we have a bright line rule that three consecutive years of nonuse is prima facie evidence of trademark abandonment. Prima facie is a fancy Latin expression generally taken to mean ‘legally sufficient’ but with the caveat that the presumption of sufficiency can be overcome or rebutted by counter-evidence of sufficient strength and quantity. “Use” cannot be a mere pretext to save the mark, but actual, bona fide use in ordinary trade or commerce.
The Intent element of (1) has been the subject of much discussion. Is it intent not to ever resume use, or is it intent not to resume use for the reasonably foreseeable future? The 2nd Circuit, in Silverman v. CBS, Inc. decided that for public policy reasons and upon a close reading of the Lanham Act, intent must be given the ‘reasonably foreseeable future meaning.’ Otherwise it would be impossible to ever decide if a mark had become abandoned. It is also generally accepted that foreign use cannot save or reinstate a mark from abandonment in the United States.
(2) When any conduct of the owner… (via omission or commission) causes the mark to (become generic.)
Genericness happens, generally, when the mark becomes the generic name for the type of good or service to which it originally referred. For instance, the brand name Aspirin eventually became the name the general public came to use for any brand of acetylsalicylic acid painkiller. It can be helpful to think of the biological terms “genus” and “species.” A trademark must be specific, it must identify a species. Genus is related to the word general and generic, and is a broader term encompassing many species. The genus Canis includes dogs, jackals, and coyotes; a domestic dog is of the species lupus, for a full Latin name of Canis lupus. To make an analogy to trademark genericness, imagine that 10 years from now it became accepted usage to say “dog” to denote any member of the genus Canis, from grandma’s toy poodle to the prehistoric dire wolf. Well then, the term “dog” would no longer be eligible for trademark protection (in our silly example) because it would be too broad. In trademark terms it would no longer have source (or species) identifying capability.
What is the significance of the idea that acts of omission by the owner are enough to cause trademark abandonment through genericness? Simply put it prevents any kind of argument that (2) requires an intent requirement. Attorneys frequently like to read nearby paragraphs together when making arguments, and not explicitly stating that acts of omission are enough would make it very tempting for attorneys to argue that (2) just like (1) required an intent element. Instead, an owner can lose a mark via genericness simply by not taking steps to prevent it from becoming generic. One famous example is Xerox, which is technically not a generic mark – due almost exclusively to superhuman efforts by the company via advertising and marketing to try to prevent the public at large from referring to a ‘copy’ as a ‘Xerox.’ A lot of their efforts are spent ‘educating’ the public that Xerox is a trademarked term that should always be used as such, along with appropriate capitalization.