Proving and Defeating Trademark Abandonment: A Litigator's Guide to Non-Use, Intent to Resume, and Excusable Non-Use
By Casey Scott McKay ·
This guide is the operational companion to Marksy's abandonment article, and it assumes the doctrine rather than re-teaching it. It walks a single invented matter — a Bend, Oregon bootmaker whose application is blocked by an eight-year-old apparel registration covering goods the registrant never sold — through ten numbered stages, from fixing the client's actual objective to the endgame. It sets out how to date the non-use window before you spend money, how to run an investigation that will survive a USPTO institution decision (sales channels, Wayback captures, retailer checks, import records, state filings, and an investigator purchase, with the ethics rules that govern each), and how to choose among ex parte expungement, ex parte reexamination, a Section 14(3) cancellation, a Section 14(6) never-used claim, and a district court counterclaim. It gives model language a practitioner can adapt: a verified investigation statement for a $400 expungement petition, abandonment pleading paragraphs, a discovery set with 30(b)(6) topics, a registrant's declaration of intent to resume use, and both a defensible and an indefensible Section 8 excusable non-use claim. It carries cost-and-timeline tables, a decision tree for the forum fork, the operational consequences of the preponderance versus clear-and-convincing split, and what to do when the registrant relaunches the brand mid-proceeding.
IP and Technology > Trademarks | Guide | Published 11 March 2024 - Updated 1 September 2024 | Casey Scott McKay - marksy.us
Summary. This guide is the operational companion to Marksy's abandonment article, and it assumes the doctrine rather than re-teaching it. It walks one invented matter — a Bend, Oregon bootmaker whose application is blocked by an eight-year-old apparel registration covering goods the registrant never sold — through ten numbered stages, from fixing the client's actual objective to the endgame. It covers how to date the non-use window before you spend money, how to run an investigation that survives a USPTO institution decision, and how to choose among ex parte expungement, reexamination, a Section 14(3) cancellation, a Section 14(6) never-used claim, and a district court counterclaim. It gives model language for a verified investigation statement, abandonment pleading paragraphs, a discovery set with 30(b)(6) topics, a registrant's declaration of intent to resume use, and both a defensible and an indefensible Section 8 excusable non-use claim. It carries cost and timeline tables, a decision tree for the forum fork, the operational consequences of the standard-of-proof split, and what to do when the registrant relaunches mid-proceeding.
Keywords: trademark abandonment litigation · non-use investigation · three-year presumption · intent to resume use · excusable non-use declaration · section 8 declaration · ex parte expungement · ex parte reexamination · ttab cancellation · reasonable investigation · wayback machine evidence · investigator purchase · rule 30(b)(6) deposition · burden of persuasion · clear and convincing evidence · partial cancellation · notice of reliance · resumption evidence · deadwood registration · trademark discovery plan
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