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Before Registering a Dead Trademark, Here is What You Need to Know

By John DiGiacomo

Trademarks that are used in commerce are generally registered with the US Trademark Office. A registered trademark gives the owner of the trademark exclusive rights to use the trademark with respect to the categories of goods and services with which the trademark is associated. However, registration can be “lost.” This creates what is commonly called a “dead” or abandoned trademark. Trademark registration can be lost in several ways including:

  • Failure to maintain the registration — about every 10years, registration must be renewed with the Trademark Office
  • Action by the Trademark Office to deem a trademark abandoned
  • Court or administrative actions by third parties seeking to deem a trademark abandoned

In theory, a dead trademark is available for anyone to seek a new registration. However, some caution is in order.

First, how a trademark registration is lost can have important effects. For example, if a trademark is deemed abandoned by a court or the Trademark Office, the trademark is probably truly “dead.” But, often, there is now a similar trademark that has been registered that will likely prevent registration of the dead trademark by a new owner. The Trademark Office will not register a trademark that is the same as or confusingly similar to one already registered.

Second, a “dead” trademark might still be in use. Registration is important, but not essential to the existence of the legal rights associated with a trademark. Thus, even though the registration may be lost, that does not necessarily mean that the trademark is not being used. A trademark is only truly “dead” when the registration is lost/lapsed AND the trademark is not being used.

For these reasons, before attempting to register what might seem to be a dead trademark, it is necessary to conduct a market search to ensure that the trademark is not being used. The market search addresses two practical issues: Is the owner still using the trademark (even though registration has lapsed/been lost) and is another person or entity using the trademark (or something very similar)? The search must be for current use and for use in the last few years. A trademark can be deemed abandoned if it has not been used for three consecutive years. See Lanham Act, 15 U.S.C. §1127.

Matters are further complicated by the concept of excusable nonuse. Excusable nonuse preserves trademark rights even though the owner might not have used the trademark in commerce within the last three years. Examples of excusable nonuse include trade embargoes, sale of the business, delays in regulatory approval, fires and other disasters.

Thus, even if the market search shows no current or recent use of the trademark, efforts should be made to contact the owner/holder of the dead trademark to confirm abandonment and that there is no intent to resume use of the trademark.

If there is legal uncertainty about whether a trademark is abandoned and the owner cannot be located, litigation is an option. Suits can be filed with the Trademark Office or in federal court against the owner of the dead trademark seeking a declaration of abandonment. Two legal elements must be proven:

  • Nonuse for three consecutive years and
  • The owner’s intent not to resume use

Finally, before attempting to register a dead trademark, it is necessary to consider which application to file. If you are already using the “dead” trademark in commerce, then a standard application for registration can be filed. Use in commerce is a prerequisite for standard registration. However, there is legal risk in using a trademark if there is uncertainty about the mark’s legal status.

Thus, more often, those seeking to claim a “dead” trademark submit an intent-to-use application with the Trademark Office. An intent-to-use application states that use will begin in the near future (usually within a year). An intent-to-use application has two main advantages. First, there is less legal risk of an infringement lawsuit being filed since there has been no use. Second, the registration process can help resolve any legal uncertainty as to the status of the trademark. The Trademark Office will review the application and will deny registration if the previous trademark is still “alive” or if a confusingly similar trademark has been registered. Furthermore, the Trademark Office will publish the application and give third parties the opportunity to object to registration. If no objections are filed, then this is further evidence that the trademark is not in use and not claimed by another.

For more information or if you have questions about creating and registering a trademark (new or “dead”), contact the trademark lawyers at Revision Legal at 231-714-0100.

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