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Preventing Loss of Trademarks Rights: Quantitative and Qualitative Assessments of “Use” and Their Impact On Abandonment Determinations

Official Journal of the International Trademark Association
June 2004

This article, published in the Official Journal of the International Trademark Association (94 Trademark Reporter 634), provides an extensive analysis of abandonment of trademarks. The article focuses the quantity and quality of use of trademarks and endeavors to provide an analytical framework for assessing “use” of the mark at issue. Quantitative measures of use such as dollar and unit sales are rarely the sole determinant of abandonment. Courts examine other quantitative use variables such as licensing use, use in advertising and promotion, and the geographic scope of use. Courts also assess a variety of qualitative variables, including commercial use versus noncommercial use, “sham” use, the extent of residual goodwill, and the products or services with which use is made. Finally, in some cases, the quantitative or qualitative nature and scope of use may impact the court’s assessment of the trademark owner’s intent not to resume use, which must be proven in order to establish abandonment. The article (1) discusses the general principles governing abandonment of trademarks used on goods and in connection with services; (2) reviews and analyzes legal authorities evaluating the quantitative and qualitative use variables examined in abandonment cases, and what facts pertaining thereto might support or disprove abandonment; and (3) provides practical suggestions to trademark owners contemplating the future use of a trademark and what to do to avoid abandonment and to preserve exclusive rights thereto.

To obtain a copy of this article, please contact Christopher T. Micheletti.

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