What do these photos have in common, besides the fact that they are both from Roadsidepictures‘ beautiful photostream collection posted on Flickr?
Well, one might say, they both illustrate a form of abandonment, an abandoned building on the left, and apparently some abandoned intellectual property in the form of a clock logo and ’round the clock protection tagline on the right (the package of vintage Dial soap apparently was purchased in Sandy, Utah, as late as 2003).
With respect to trademark abandonment, at least under U.S. Trademark Law, it is often said, a trademark owner must "use it or lose it." Apparently in that spirit, over the last couple of decades or so, Dial has permitted its various U.S. Trademark Registrations containing the clock logo and ’round the clock protection tagline to become cancelled or to expire, here, here, here, here, here, here, and here.
If a trademark owner discontinues use of a trademark with an intent not to resume use of the mark, at that very moment, the trademark is immediately abandoned (putting aside the potential issue of "lingering goodwill"). Since U.S. Trademark Law appreciates (or at least anticipates) that there is likely to be debate over the "intent not to resume use" element, legal abandonment is presumed after three consecutive years of non use.
A couple of other important points about trademark abandonment are worth noting.
Under U.S. Trademark Law, if a trademark registration has been abandoned or permitted to lapse or expire, it doesn’t necessarily mean that the underlying common law or unregistered trademark rights have been abandoned — if the mark remains in "use" there is no trademark abandonment, only relinquishment of the registration. Keep in mind that "use" means "bona fide use" of a trademark "made in the ordinary course of trade, and not made merely to reserve a right in a mark."
In addition, trademark abandonment occurs "[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." So, if the trademark owner does something (like misuses its mark) or fails to do something (like enforce its rights against infringers) that causes the mark to become generic or otherwise lose its significance as a trademark, there is legal abandonment of trademark rights.
So, what often happens in the marketplace after a trademark is abandoned?
Others tend to view this as an open door to adopt the same or similar marks:
Do you suppose Dial has any regrets in letting the clock logo go?Continue Reading Dialing in on Trademark Abandonment?
