Finding the ideal trademarks for your business can be grueling.
In a global economy that’s growing every day, the opportunities to seize the marks you want without creating a likelihood of confusion with an existing trademark is steadily shrinking.
When you find a mark you like, it can seem like an opportunity too good to pass up. The issues start when these perfectly matched marks are dead or abandoned.
Bringing Life to a Dead Mark
The USPTO defines a dead mark as:
“a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing.”
While you can register a dead mark, other potential issues may make it not worth the risk. These can include the likelihood of confusion and/or penalization under common law rights. In order to weigh its value, you should consider the following questions:
1. How long has it been abandoned?
If the mark has been abandoned for 3 to 5 years, odds are, you’re in the clear. That’s the span that the USPTO requires trademarks to be maintained, meaning if the proper paperwork hasn’t been filed, it’s potentially up for grabs.
The risk comes from the Lanham Act.
Through this act, a mark is not abandoned until it’s been discontinued without intent to resume use. While the USPTO will not track the mark in their registry as active because the paperwork has not been filed, this doesn’t mean that the mark isn’t still being used by a business who has an acceptable reason for not maintaining it in the registry.
If a mark isn’t used for 3 years, it’s accepted as abandoned at face value unless the owner can prove otherwise. That’s where the risk arises.
If you can prove in court that the original owner had no intent to continue its use, then have at it. Understand, however, that the subjectivity of the process will give you problems if the previous owner pushes back.
If you’re set on using the mark, contact the previous applicant and get their permission before moving ahead. It may be difficult to track them down and get an answer, but it’s better than future legal problems for your business.
2.How did it die?
Many marks die from not being maintained after a business goes under or pivots. How it died is important to note because there may be a hidden reason that may hurt you in the long run.
If the mark died because of incomplete filing, it could still be in use in commerce under common law rights. For example, let's say Star Wars wasn’t properly maintained. Their products are still on the market and understood to be part of a brand. If a business were to try registering "Star Wars", they could still be sued for the likelihood of confusion, even though the mark is dead.
Another potential issue is called “genericity”. This is when a trademark becomes popularly known by the public to replace the true name of the product.
For instance, “trampoline” was at one point a branded product. Today, it refers to all similar products, not a specific company’s individual product. If this is the case, you won’t be able to register the mark without legal issues.
Again, if the trademark died because of failed maintenance, the registrant could still have the intent to use, so it’s best to err on the side of caution.
3. Is it still being used?
An often neglected task is checking whether a mark is being used or not.
Along with your standard online search, check any other countries that the mark was used in. A business may have let their mark expire in the United States as they moved to Canada, but still have the intent to register it again.
To do this, clear the rights. Check for websites, business names, labels, and products. Anything that could bear the mark needs to be verified.
If it is being used but under a different class than you intend to register it in, you can still run into a likelihood of confusion and lose the mark.
Run a thorough search with USPTO’s Trademark Electronic Search System prior to engaging with any dead marks. Many other search systems will not explore dead marks in their listings, which can be hazardous to your business.
For a safer search, try our NameCheck software. It’ll take you a fraction of the time and grants you access to a more comprehensive report.
4. What’s it really worth to you?
Finally, you need to determine what the mark is actually worth to you.
Is it essential that you use that specific mark, or is there an alternative you can base your marketing plan around? The benefit needs to outweigh the potential loss unless you’re looking for a gamble.
In the off chance that you missed something in your search, are you prepared to be taken to court? By using a dead mark, you run the risk of mark infringement, losing money and potentially your business.
Bringing Trademarks Back From the Dead
Unless you’re prepared for and comfortable with a worst case scenario, it’s best to avoid dead and abandoned marks.
If you still have an urge to investigate a mark’s status, use NameCheck to search specific jurisdictions, watch for activity, and find out whether a mark is available in as little as 15 seconds.
Seeking dead marks involves a lot of risks, but by taking these questions into consideration, you can cut down on the dangers involved.