Yes, you can own a trademark without actively using it, but this situation comes with significant risks and limitations. Trademark rights are fundamentally based on commercial use, and most jurisdictions follow a “use it or lose it” principle that can result in losing your trademark if you don’t use it within specific timeframes. Understanding the rules about trademark non-use, grace periods, and maintenance requirements is important for protecting your intellectual property rights.
What happens when you register a trademark but don’t use it? #
When you register a trademark but don’t use it commercially, you risk losing your rights through abandonment or cancellation proceedings. Most jurisdictions enforce a three-year rule where non-use creates a presumption of abandonment, though some countries have different timeframes. Your trademark becomes vulnerable to challenges from competitors who want to use similar marks.
The legal principle behind this is straightforward: trademarks exist to identify goods and services in commerce, not to warehouse brand names for future use. Courts recognise that allowing indefinite trademark hoarding would unfairly limit the pool of available marks for active businesses. This “use it or lose it” approach ensures trademarks serve their intended purpose of preventing consumer confusion in the marketplace.
Non-use consequences vary by jurisdiction, but common outcomes include:
- Loss of exclusive rights to use the mark
- Inability to enforce the trademark against infringers
- Vulnerability to cancellation petitions
- Difficulty proving damages in infringement cases
- Potential removal from trademark registers
Some countries are stricter than others. In China, for example, trademark squatting has led to particularly rigorous enforcement of use requirements. The burden shifts to the trademark owner to prove genuine use when challenged, making documentation and evidence retention vital.
How long can you hold a trademark without using it? #
Grace periods for holding unused trademarks vary significantly across jurisdictions. In the United States, you must show use within three years of registration or risk abandonment claims. The European Union allows five years of non-use before vulnerability to cancellation. Other countries have their own specific deadlines and requirements.
The United States provides some flexibility through its intent-to-use system. After filing, you have six months to begin use, with possible extensions up to three years total. Once registered, continuous non-use for three consecutive years creates a legal presumption of abandonment. However, you can overcome this presumption by showing valid reasons for non-use and intent to resume.
European regulations are more generous, allowing five years of non-use from registration before cancellation becomes possible. This longer period recognises that some businesses need time to develop products or enter markets. However, once the five-year period passes, any interested party can file for cancellation based on non-use.
Different jurisdictions have varying standards for what constitutes acceptable use:
- Minimal sales may suffice in some countries
- Advertising and promotional use sometimes counts
- Token use solely to maintain rights is generally insufficient
- Export-only use may satisfy requirements in the country of manufacture
- Licensing to third parties can constitute use by the owner
Understanding these timeframes helps you plan your trademark strategy and avoid unexpected losses of valuable intellectual property rights.
What is an intent-to-use trademark application? #
An intent-to-use (ITU) trademark application allows you to reserve a trademark before actually using it in commerce. This system, primarily used in the United States, lets businesses secure priority filing dates while finalising products or services. You must demonstrate a bona fide intention to use the mark commercially and eventually file proof of actual use.
The ITU process begins with filing an application stating your good faith intention to use the mark. If approved, you receive a Notice of Allowance giving you six months to file a Statement of Use showing actual commercial use. You can request up to five six-month extensions, providing up to three years total to begin use.
Strategic advantages of ITU applications include:
- Securing early priority dates before product launch
- Testing market reception without losing trademark rights
- Preventing competitors from registering similar marks
- Building trademark portfolios for future expansion
- Coordinating trademark protection with product development timelines
ITU applications require careful planning. Each extension costs additional fees, and you must maintain genuine intent throughout the process. False statements about intent can invalidate your application or registration. Many businesses use ITU applications when developing new product lines, entering new markets, or rebranding existing offerings.
The system balances trademark protection needs with preventing speculation. You cannot simply warehouse marks indefinitely through repeated ITU filings. The requirement for bona fide intent means having concrete plans for commercial use, not merely hoping to use the mark someday.
Can someone challenge your trademark for non-use? #
Yes, competitors and other interested parties can challenge your trademark based on non-use through cancellation proceedings. These challenges become possible after specific periods of non-use, typically three to five years depending on jurisdiction. The challenger must show prima facie evidence of non-use, shifting the burden to you to prove continued use or valid excuses.
Anyone with legitimate interest can typically file non-use challenges. This includes:
- Competitors wanting to use similar marks
- Businesses expanding into your trademark classes
- Companies clearing obstacles for their own applications
- Previous owners seeking to reclaim abandoned marks
- Parties involved in domain name disputes
Defending against non-use challenges requires solid evidence of commercial use. Courts examine whether use is genuine or merely token attempts to preserve rights. Acceptable evidence includes sales records, advertising materials, product packaging, customer correspondence, and distribution agreements. The quality and extent of use matters more than quantity in most jurisdictions.
Legitimate reasons for non-use that courts may accept include:
- Regulatory delays preventing product launch
- Force majeure events disrupting business operations
- Bankruptcy proceedings with intent to resume
- Seasonal products used only at specific times
- Retooling or reformulation of products
Documentation becomes vital when facing challenges. Maintaining records of business plans, regulatory correspondence, and reasons for delays strengthens your position. Proactive trademark monitoring helps identify potential challenges early, allowing time to resume use or prepare defences.
What counts as trademark use to maintain your rights? #
Genuine commercial use that maintains trademark rights involves offering goods or services under the mark in the ordinary course of trade. This means real sales to customers, not token transactions designed solely to preserve rights. Courts look for use that fulfils the trademark’s function of identifying commercial source, rejecting artificial arrangements that lack business purpose.
Acceptable forms of trademark use include:
- Direct sales of products bearing the mark
- Services provided under the trademark name
- Online sales through e-commerce platforms
- Licensing arrangements with quality control
- Promotional goods distributed to generate business
The amount of use required varies by jurisdiction, but most look for genuine commercial activity rather than specific sales volumes. A small business making regular sales might satisfy requirements that a large corporation’s token use would not. Context matters: courts consider the nature of goods, typical industry practices, and business size.
Common mistakes that fail to satisfy use requirements include:
- Single sales to friends or employees
- Shipping empty boxes with labels
- Advertising without actual product availability
- Warehouse storage without distribution
- Internal company use without external sales
Online presence adds complexity to use requirements. A website displaying the trademark might not suffice without actual e-commerce capability. Social media profiles need to connect to real business activities. Digital services must be genuinely available to users, not just described on placeholder pages.
Different countries have specific standards for acceptable use. Some accept export-only use, while others require domestic market presence. Service marks need actual service provision, not just advertising. Understanding your jurisdiction’s specific requirements helps maintain valid trademark rights while avoiding costly mistakes.
Protecting your trademark rights requires understanding the balance between registration and actual use. While you can own a trademark without immediate use in some circumstances, long-term non-use creates significant risks. Whether you’re planning future products, navigating regulatory delays, or managing existing portfolios, staying informed about use requirements helps preserve valuable intellectual property. If you need guidance on maintaining your trademark rights or defending against non-use challenges, our team at Jump can help you develop strategies that protect your brand investments. Get in touch through our contact page to discuss your specific situation.
