Can I Use An Abandoned or DEAD Trademark?

It depends on the facts and if the trademarks are still in use.  A trademark examiner will not refuse a trademark application based on a cancelled or abandoned trademark. The trademark examiner only is allowed to consider registered trademarks and prior pending application in an ex parte proceeding (normal application process).

If the facts show that the trademark is abandoned or cancelled and the facts show that the owner of the abandoned or cancelled mark is no longer using the mark, someone else may be able to use the abandoned trademark. If the facts show that the abandoned or cancelled trademark is in one field, someone may be able to use the mark in another field even if the original owner is still using it. I the facts show that the prior user is still using the mark and that it is a famous trademark, famous trademarks get a wider scope of protection than other marks. Federal registration has a lot of presumption rights that are lost when a trademark registration goes abandoned and there may be room for someone else to register or use the mark.

What happens if I start using the mark or try to register the mark but the previous trademark registrant is still using the mark? The previous owner may still claim common law rights in a inter partes proceeding at the USPTO in a TTAB proceeding (opposition or cancellation) or may sue the new user or may never do anything. Some trademark owners are very litigious (not something that shows up in a basic trademark search) and have lots of time and money to oppose others. Trademark owners that have famous trademarks or think that they have famous trademarks may be more likely to take action against someone using their mark. Since TTAB proceedings are not searched by most trademark databases this information would not show up on most trademark searches but it is part of a Not Just Patents 5 Step Verification.

Why the mark is DEAD may give some clues about whether or not the mark is available along with researching advertising and web sites for use. One reason for a mark to go abandoned and become a DEAD mark is failure to complete the application process or failure to complete the process correctly or FAILURE TO TIMELY FILE REQUIRED DOCUMENTS. Current Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. Did they start using the mark and just not file the Statement of Use or did they give up on the mark? While someone else may apply for a mark that is DEAD, that does not mean that the mark is safe for anyone because the mark may still be in use even if not registered. It may however mean that the mark may register for the new user if the previous owner is not monitoring pending marks and did not oppose during the Opposition Period after the mark published for opposition or the previous owner did not attempt to cancel the mark. Trademark examiners do not and cannot take DEAD marks or common law marks into account when searching for Likelihood of Confusion conflicts with pending or registered mark. The owner of the DEAD or common law marks would have to pursue stopping the application themselves through an Opposition process, Cancellation process or in court.


Another reason for a DEAD mark is: “Current Status: Abandoned because the applicant failed to respond or filed a late response to an Office action” may mean that the mark was merely descriptive, had an inadequate specimen, had a likelihood of confusion with pending or registered marks or other reasons. The mark may be abandoned by the owner or the owner just did not competently answer the refusal or is no longer using the mark.


What does a status of "dead" or "abandoned" mean? Here’s the statute:

15 USC §1127: Abandonment of mark. A mark shall be deemed to be “abandoned” if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

If an application shows a status of dead or abandoned, it means THAT specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. However, it does not necessarily mean that there are not OTHER marks which the examining attorney would cite. Also, there is always the possibility that an abandoned application COULD be revived (e.g., if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant establishes that a response was sent, and the USPTO simply failed to match it with the file in a timely manner, then the case will be revived). Also, regardless of the status of an application within the office, the owner may still claim common law rights. Extracted from http://tess2.uspto.gov/bin/gate.exe?f=help&state=4005:u7fvf.1.1#FAQ_DEAD

Many trademark verification or search services disregard trademarks that are marked DEAD in search records. Unfortunately, this does not necessarily mean that a trademark is available for someone else to use.  The Lanham Act expressly states that "[n]onuse" of a mark "for 3 consecutive years shall be prima facie evidence of abandonment." 15 U.S.C. § 1127. Itc Ltd. v. Punchgini, Inc., 482 F.3d 135 (2nd Cir., 2007). A search  or search report that is done mechanically and/or without knowledge of trademark law, may “verify” or “clear” a trademark for use that is still being used by a prior user and that prior user may still claim common law rights. A direct hit federal search or an inexpensive SAME DAY REGISTRATION service would probably not reveal this information.


 EXPRESS ABANDONMENT

§ 2.68 Express abandonment (withdrawal) of application [37 C.F.R. Part 2-Rules of Practice in Trademark Cases]

An application may be expressly abandoned by filing in the Patent and Trademark Office a written statement of abandonment or withdrawal of the application signed by the applicant, or the attorney or other person representing the applicant. Except as provided in § 2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, affect any rights that the applicant may have in the mark which is the subject of the abandoned application.


Many trademark searches or trademark verifications may show that a mark is DEAD but not show that the mark was EXPRESSLY ABANDONED. In a case of express abandonment, a prior user of the mark may have sent a “cease and desist” letter to the new applicant or registrant letting them know that they would be sued or opposed if they continued the registration process any further and that continued use of the mark was intentional infringement. In this case, a DEAD mark that is an EXPRESSLY ABANDONED DEAD mark is a red flag that a potentially big problem exists with registering this mark rather than showing it is available. A quick, do-it-yourself search may not reveal this information or worse may indicate that the mark is clear. Getting a cease and desist letter early in the process may be getting off easy compared to being sued or trying to defend against an opposition or cancellation after substantial funds have been invested already.

ABANDONMENT-FAILURE TO RESPOND

§ 2.65 Abandonment.  [37 C.F.R. Part 2-Rules of Practice in Trademark Cases]

(a) If an applicant fails to respond, or to respond completely, within six months after the date an action is issued, the application shall be deemed abandoned unless the refusal or requirement is expressly limited to only certain goods and/or services. If the refusal or requirement is expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services. A timely petition to the Director pursuant to §§ 2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a response that avoids abandonment of an application. (b) When action by the applicant filed within the six-month response period is a bona fide attempt to advance the examination of the application and is substantially a complete response to the examiner’s action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of abandonment is considered. (c) If an applicant in an application under section 1(b) of the Act fails to timely file a statement of use under § 2.88, the application shall be deemed to be abandoned.


Failure to respond is the leading cause of trademark application abandonments. Only 30% of TEAS Plus applications proceed to publishing for opposition without an office action refusal (the percentage is worse for TEAS). Overcoming a refusal without knowledge and experience in trademark law is difficult and many refusals can’t be overcome even with knowledge and experience because the applications were for trademarks that have serious Likelihood of Confusion issues with registered or pending trademarks. Sometimes, the likelihood of confusion is with a junior user, someone who started using the mark later but got their application in sooner. In cases like this, a cancellation proceeding may be the answer for the senior, prior user who was late in getting their application into the USPTO.


Many  trademark problems, refusals & delays can be avoided or overcome by using Not Just Patents® Trademark Services. We can help you determine if it is safe to use a DEAD or abandoned trademark.

Not Just Patents ® Legal Services provide a broad range of services for Intellectual Property Protection. If you are unsure what type of product or service protection is best for your business or just have a question, please call–a brief initial consultation is free at 1-651-500-7590.  See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.


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What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

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Not Just Patents Often Represents the Underdog

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Section 2(d) Refusals   FilingforTrademark.com

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Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

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DIY Overcoming Descriptive Refusals

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