A once-significant trademark or service mark that has fallen on hard times may still remain important to its owner. But the owner faces the possibility that such a “heritage mark” may be deemed abandoned. As set forth below, there is no substitute for ongoing bona fide actual use of a mark in commerce for purposes of maintaining rights to it. It is therefore prudent to continue the mark’s use in connection with at least some products or services. To the extent this strategy is not feasible, it may be possible to cultivate residual good will by continuing to refer to the mark in the company’s promotional efforts or in a company “history” and by avoiding announcements that it has been discontinued.

In the United States, trademark rights arise from use in commerce. A mark is considered abandoned when its use has been discontinued with an intent not to resume that use. See 15 U.S.C. 127 (2006). Federal law recognizes a presumption that a mark that has not been used in three years has been abandoned. Thus, after three years of nonuse, the burden of production shifts to the party that previously used the mark to show a bona fide intent to resume the mark’s use. Under this test, “[a]n ‘intent to resume’ requires the trademark owner to have plans to resume commercial use of the mark.” Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 103 (5th Cir. 1983).

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