Think an Expired Trademark Registration Means a Brand Is Up for Grabs? Think Again.

One of the most common misconceptions in trademark law is that an expired federal trademark registration automatically opens the door for someone else to claim the mark. In reality, the expiration of a registration is often just one piece of a much larger puzzle.

Registration vs. Trademark Rights

Federal registration provides important benefits, but trademark rights in the United States are rooted in use, not registration alone. That means a company may continue to own enforceable rights in a trademark even after its federal registration has expired.

To establish abandonment under the Trademark Act, two elements generally must be present:

• The trademark owner stopped using the mark; and

• The owner had no intention of resuming use.

Both requirements must be satisfied. Showing that a registration lapsed, or even that use became less visible, is not enough by itself.

This issue recently arose in litigation over Nike's TOTAL 90 branding. Nike allowed its federal registration for the mark to expire several years ago. Another company later obtained registrations for the same mark and argued that Nike had abandoned its rights but the court was not persuaded.

Although Nike's use of the TOTAL 90 mark had become much more limited after the registration expired, the court found evidence that the company had continued using the mark and had not demonstrated an intent to permanently walk away from the brand. Because abandonment requires both non-use and an intent not to resume use, the challenger was unable to establish that Nike's rights had ended.

Lessons for Brand Owners

Companies should think carefully before allowing a trademark to fade from their portfolio. Even if a product line is temporarily discontinued, maintaining evidence of continued use or documenting plans to relaunch the brand can help demonstrate that a brand was never truly abandoned.

A Word of Caution for Businesses Adopting Older Marks

Businesses searching for a new brand name should resist the temptation to rely solely on the USPTO database. An expired registration does not necessarily mean the underlying trademark rights have disappeared.

A thorough clearance investigation should consider:

• Federal trademark registrations and applications

• Common-law trademark use

• The prior owner's ongoing commercial activity

• Evidence suggesting plans to resume use of the mark

Skipping this analysis can expose a business to infringement claims even when the federal registration appears to have expired.

Bottom Line

An expired trademark registration is not the same as an abandoned trademark. Whether rights continue often depends on the owner's continued use of the mark and its intent regarding future use. In some circumstances, courts may also consider whether consumers still associate the mark with its original source. For businesses evaluating whether to discontinue a brand, revive an older trademark, or adopt a mark that appears to be available, conducting careful trademark due diligence before investing in a new brand can help avoid expensive disputes later.