Turning the TTables

If you find yourself defending against an opposition or cancellation proceeding in the TTAB, you’ll want to find ways to fight back by threatening your adversary’s trademark registration. Start with a key reality of U.S. trademark law: use is the cornerstone of rights. A federal registration is powerful, but it cannot be kept alive without continued use of the mark in connection with the goods and services listed in the registration. When a registrant stops using the mark and has no real plan to resume use, the registration becomes vulnerable to cancellation on grounds of “abandonment.”

Simply put, a mark can “go dark” when its owner stops using it and doesn’t plan to start again. Such a situation of abandonment makes the registration vulnerable to cancellation.

Of course, not every case is ripe for an abandonment counterclaim. But take a close look at any trademark registration your adversary is citing against you. In particular, look at the registration’s identification of goods and services (“IDGS”), which lists everything covered by the registration. If the IDGS lists goods and services that your adversary is not actually offering under the mark, that can expose your adversary to an abandonment counterclaim. This is especially likely to happen if the IDGS contains a sprawling list of different kinds of goods and services. That may increase the chances that the owner’s real activities in the marketplace have drifted away from what is stated in the IDGS. Even if your adversary has stopped offering only a subset of the IDGS, that can still open up vulnerability to a counterclaim for partial cancellation.

What is “abandonment”?

In essence, abandonment is about stopping use and not planning to restart. If a mark owner stops using its mark, the law presumes the mark is abandoned after three consecutive years of non-use. That is called “prima facie” abandonment: the three-year period of non-use, all by itself, creates a presumption that that the owner lacks intent to resume. Then, the owner must bear the burden of rebutting the presumption by showing either use or a concrete plan to resume use.

Even if there has been no three-year period of non-use, abandonment can be proven with facts showing that use has stopped and there is no genuine plan to resume—for example: shutting down production, closing sales channels, cancelling supplier contracts, or telling partners the product line is discontinued.

What is an abandonment counterclaim?

When your adversary attacked you in the TTAB, there’s a good chance they cited one or more of their own trademark registrations against you. If you believe your adversary has actually abandoned their mark (whether fully or partially), then you can attack their registration by bringing a counterclaim to cancel it on grounds of abandonment. This counterclaim puts your adversary’s actual marketplace activity under the microscope and compares it to what is claimed in the registration.

If your adversary has abandoned their mark for the entirety of the IDGS, you can counterclaim for full cancellation. If your adversary has abandoned the mark for only a subset of the IDGS, you can counterclaim for partial cancellation.

Spotting vulnerability: registration vs. marketplace reality

It’s a well-known fact that many trademark registrants don’t keep their registrations fully aligned with their real-world businesses over time. A registration’s IDGS may list a long menu of goods or services, while the owner is now actually selling a mere fraction of them—or has stopped selling anything at all under the mark. Look for telltale signs: product webpages removed or marked “sold out” for long stretches; brand social feeds going silent; distributors or retail channels dropping the product line; or press releases announcing pivots away from the product category. These disconnects may create openings for an abandonment counterclaim because the registration no longer reflects actual use.

Any evidence of abandonment that you can gather before filing your counterclaim may be bolstered later on if the case reaches the stage where the parties get to demand documents from each other (i.e., Discovery). If your adversary has documents showing abandonment, the prospect of having to turn those over may further encourage them to reach an amicable settlement of the dispute.

The power of an abandonment counterclaim

If you can raise a promising counterclaim for abandonment, you can alter the contours of the entire case. While your adversary had sought to put you in the hot seat, you can switch things around and put them in the hot seat.

Bottom line

An abandonment counterclaim can neutralize your adversary’s trademark registration by forcing the official records to come to terms with marketplace reality. Just because your adversary has a trademark registration on the books doesn’t necessarily mean they’ll be successful in weaponizing that registration against you. If they have non-use skeletons in their trademark closet, you should leverage that right away by asserting abandonment.