Identifying a Dead Trademark
To understand what makes trademark a dead trademark, recall what a trademark does. A trademark is a distinct symbol, logo, word, or words that are legally registered or established through their use as representing a company or product. A trademark protects brand names and logos used on goods and services.
Once a business chooses a trademark, the business usually but not always protects it by filing an application to register it with the United States Patent and Trademark Office (USPTO). Registration is not required, but it is very helpful for a business trying to protect its trademark (and thus its brand and reputation in the public) from infringement by others. Regular usage by the business will also build trademark rights.
After the registration application is filed, the pending registration application can be abandoned before the USPTO approves it. A trademark registration application will be deemed abandoned under two circumstances:
- The applicant fails to respond to a USPTO Office Action.
- The applicant provides an incomplete response to the USPTO.
Realize that most trademark registration applications fail at least once. The applicant may decide not to proceed with registration for a number of reasons.
An abandoned trademark application or registration can lead to the trademark being listed by the USPTO as a dead trademark. However, just because the trademark is listed as dead on the USPTO’s listing does not preclude the registrant from continuing to use it as its trademark, nor does it mean the trademark is available to use by others. The trademark owner may have abandoned the federal trademark registration but is still using the mark and still has trademark rights in it.
Once a trademark is registered with the USPTO, the trademark owner must keep the registration “alive” by filing a declaration of continued use. Trademark owners need to file these documents 5 and 10 years after the registration. Failure to keep it alive by filing those documents can result in a “dead” trademark registration. A dead registration does not necessarily mean the trademark itself is dead.
How Does a Trademark Become Dead?
Situations that can lead to a dead trademark include:
- Genericity: The death of a trademark can occur when a mark holder is unable to prevent the public from using it to describe a general item or service. Over time, the public no longer associates the trademark with a specific brand, and the trademark no longer has a reason to exist. In such cases, the USPTO can decide to “kill” a trademark. This actually happened to the original manufacturer of aspirin. The term “aspirin,” is now a word commonly used to describe pain relievers
- Abandonment: Abandonment occurs when a trademark holder stops using a trademark with no intention of using it again in the future. If the owner does not use the trademark for three consecutive years, the trademark is dead.
A trademark owner can also abandon a registered trademark by expressly informing the USPTO of the owner’s desire to abandon it. However, an express abandonment of the USPTO registration does not affect the trademark owner’s common law trademark rights to continue using the mark.
- Poor Licensing: Frequently, a trademark owner will license the use of its trademark to other businesses. In those instances, the trademark owner must monitor and supervise the trademark use to make sure that the licensee is producing the same exact good or service. Otherwise, the licensee can poach the trademark and a court can kill the owner’s rights to it.
- Assignments: A trademark owner can transfer the trademark ownership rights to another party. Such a transfer must include a sale of the trademarked products as well. In other words, the trademark owner may not sell only the trademark because the trademark would no longer represent the original product that the trademark was associated with.
How to Acquire a Dead Trademark and the Associated Risks
A business that wants to acquire a dead trademark needs to proceed with caution. Getting the help of an experienced intellectual property attorney can save such a business a substantial amount of time and money by doing it right.
First, the business should determine that the trademark is in fact dead by conducting an exhaustive and careful internet search for current use (in which case it is not available for you to use) and a search of the USPTO’s trademark database.
If the USPTO database indicates the trademark is dead because it has been abandoned, remember that the owner may still have viable rights to its use. If you try to use it, you run the risk that the owner will sue for trademark infringement. In such a case, you should try to contact the trademark owner to determine if the owner still claims rights to the trademark or intends to use it in the future.
Conducting a professional trademark search is something best done by a trademark attorney experienced in conducting a professional trademark search.
A trademark that has not been used for three consecutive years is likely available for use. However, if the original owner can prove its intent to resume using the mark, it might be able to preclude your use and win a trademark infringement suit against your use of it. This possible resurrection of such a “zombie” trademark depends on how popular the original mark was and how much consumers are still able to recognize it.
Once you file a trademark registration application with the USPTO, the USPTO will check on the status of the trademark and approve or deny your application.
Speak to the Trademark Infringement attorneys at KPPB LAW for more information.
Trademark use and registration can be a risky business. It becomes even riskier when you try to use a dead trademark only to discover that it was not totally dead. If you try to take this on without an expert, you can easily regret it. The trademark infringement attorneys at KPPB LAW can help make sure you do not go wrong. Contact them today to discuss your trademark questions.