by Mona Adele

Created on: March 04, 2009

The law of trademark abandonment, also referred to as "non-use" and "cancellation", is international in scope. While the time frame and specific definition for non-use and abandonment vary slightly from country to country, countries that acknowledge trademark rights permit opposition to the mark on the basis of abandonment and cancellation by non-use. A mark is considered abandoned under Section 45 of the Lanham Act, for instance, when "its use has been discontinued with intent not to resume such use." The period of discontinued use in the U.S. is three years. In many countries the period for non-use is as many as five years.

Typically the burden of proof lay on the opponent of the mark. That burden varies drastically from country to country.

The law seems deceptively simple. At a glance it seems as though a mark is abandoned if the registrant (or the common-law owner of the mark) fails to use the mark in commerce for a set period of time. But what happens if the non-use is involuntary? What constitutes use? When is a use considered a nominal and valueless use that is solely intended to unlawfully preserve a mark? These are all issues that must be considered when determining whether a mark is in fact abandoned.

The question becomes even trickier when international standards are at issuethe law of cancellation in Egypt, for instance, sets out clear exceptions to non-use cancellation. Other countries may not acknowledge those exceptions or may set forth different standards when evaluating those exceptions. A mark that is used internationally is subject to all of these varying standards.

This discussion focuses on U.S. trademark abandonment law. However, the issues discussed below also apply to the laws of other countries.

INVOLUNTARY NON-USE

Trademarks are exposed to a variety of risks. Mergers, bankruptcy, or government seizure of a business may result in the unintentional non-use of a mark even if that business has no intention of abandoning the mark. Some courts have found that a mark is abandoned notwithstanding exigent circumstances. Other courts have ruled the opposite. Frequently the determination is based on the actual provable intent of the business and the likelihood of continued future use. Many claims for abandonment have been rejected based on a showing of "intent" not to abandon.

One notable example comes in the form of the popular cordial Chartreuse. This liqueur was originally developed using a secret process by the Order of Carthusian Monks. It

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