Somewhat like your New Year’s resolutions, trademarks can be abandoned. In a recent post, Susan Neuberger Weller of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo looks at what it takes to officially leave a mark by the side of the road.
Unlike their U.S. counterparts, non-U.S. trademark applicants are allowed to register their marks with the U.S. Patent and Trademark Office without ever having used the mark in the country, under European Community registration rules or the international Madrid Protocol. However, they must have the intention of using the mark in the country, or be subject to cancellation or being declared as void.
“Although non-U.S. applicants can register a mark without proving use, they cannot maintain the registration without engaging in use,” explains Weller. Therefore, after five or six years they have to file an affidavit providing the PTO with specific information on how it is being used in the country. This exercise must be repeated every 10 years, she says, and is different from almost every other country. Nonuse of a mark for three years or more is “prima facie evidence of abandonment” for both U.S. and international trademark holders.
A decision late last year solidified the fact that for all international entities, the period of calculation begins the moment the mark is registered in the U.S, regardless of whether it’s being used at that time. “Thus, non-U.S. registrants must be diligent and aware of the requirements of U.S. law when filing applications in the U.S.,” she says.
Read more: http://www.corpcounsel.com/id=1202717438979/International-Trademarks-Can-End-Up-Abandoned-in-the-US#ixzz3RMWDNU95