Reusage After Trademark Abandonment

I am working on a case where I am trying to acquire a trademark that has been abandoned for about 17 years now. But the very fact that I have tried to procure the trademark has made the abandoning party realize that the trademark has value to them. So now they are trying to say, "Oh, uh, well, maybe we really will use it."

But I had heard from somebody that if somebody tries to get a trademark from you that you have abandoned you can't then start using it just because they made you aware of its value. So what I am wondering here is if this principle is codified anywhere in US trademark law.

Define "abandoned". You're talking about a lapsed mark that has remained in use?

Abandonment doesn't mean that it becomes available for all to infringe on. A trademark holder can usually take up the trademarks again as long as the usage hasn't fallen into such a generic use as to preclude that.

So yes, they can six years later decide to use it again. An example is something like the Dodge Lancer. They stopped making that car in 1962 and started up again 20+ years later.

Abandonment is too general. There are lots of details that matter.

I had a case where Ameritech sued over a generic use of the word "Bell" in a domain name.

They have abandoned all their "Bell" names 7 years previously. Ironically none of their registrations (Wisconsin Bell, Illinois Bell, Michigan Bell, etc.) had EVER been used in interstate commerce. But they also had state trademarks. You might want to check on that too. I find state trademarks to be very useful.

They claimed they did not abandon the mark as it was still stamped into a bunch of pay telephones.

The federal judge bought it. They also claimed 65k in attorney fees for a case that was all paperwork without a single appearance in court. Didn't get to discovery or anything. So be careful what you wish for.

You could be in for a long battle or they might be posturing, depending on how deep both parties pockets are and if it is truly abandoned.

As you know, trademarks must be continuously used in INTERSTATE commerce. Merely having it on a website or something like that is not use in interstate commerce.

You need a trademark attorney or be a very quick study.