The Dead Trademark: All You Need to Know

What is a dead trademark?
A dead trademark Search is one that has been registered or applied for but that the Patent and Trademark Office does not recognize. Individuals or businesses can register and use a deceased trademark. This means that the trademark can no longer be used by the original business and cannot seek protection.
What is a Trademark?
The USPTO defines a trademark as a “word or phrase, symbol, design, or combination thereof, that identifies or distinguishes the source or goods of one party from others.” An service mark refers to the same thing, but a service is not the same thing.
If a competitor attempts to use the trademark for their products, the owner of the trademark can bring action against them.
How do I build trademark rights?
To obtain trademark rights in the United States, you don’t have to register trademark. These rights are acquired automatically when your marks are used in commerce.
However, trademark registration has many benefits such as:
• Protects against confusingly similar marks being used
• This allows the owner to sue in federal courts for trademark infringement.
• Companies are discouraged from using similar marks
• Notifies all others that you are the sole owner of the mark
• National trademark rights granted since the date of application.
Trademark rights have no expiration date. You are the rightful owner of your trademark as long as you continue to use the mark and pay the licensing fees. The owner of a trademark loses their rights to it after three years.
However, it might be beneficial for your business to register your mark in the USPTO Database. Registering a trademark protects you from similar marks being registered. The mark is also valid throughout the country starting with the date of the application. You can sue federal courts for other benefits.
What is the purpose of a Trademark?
Multiple reasons can lead to a trademark’s death.
• Genericity
If a trademark holder fails to limit the use of a trademarked word, the public may start to use it to describe general items or services. The trademark ceases to have a meaning once it is associated with a particular brand. The Patent and Trademark Office may decide to terminate a trademark in this instance.
This process resulted in the term “aspirin”, which is now a common name for pain relievers and it’s not associated to the original manufacturer. The term “thermos” is another example of genericity. It refers to any brand’s container for liquids.
• Abandonment
Abandonment is when a trademark holder ceases to use a trademark without any intention of ever using it again. The current law states that a trademark is considered abandoned if the owner stops using it for at least three years consecutively.
Recent lawsuits, however, such as CrashDummy Movie, LLC against Mattel, Inc. (Fed. Cir. Cir. A trademark owner who can show in court that they intends to resume the use the mark can retain their trademark rights after three years of non-use.
• Poor licensing
Although a mark holder may license his trademark to third parties, he or she must supervise the franchisee to ensure that they are producing the exact same good or service. A court can order the termination of a trademark owner’s control over these businesses if he or she fails to do so.
• Assignments
The rights of a mark holder may be transferred to another actor. However, the transfer must include the sale of products. The trademark owner cannot sell the trademark alone, as it would not be the same product the trademark was associated. The trademark is considered dead if it is not sold.
• Failure to respond / Lapse in Registration
A trademark can often die when an applicant fails to properly complete the application process. Over 70% of applications fail at least once.
All right holders must send proof to the Patent and Trademark Office that they intend to continue using the mark . These documents must be filed by trademark owners 5 to 10 years after registration. The Patent and Trademark Office does not contact owners to remind them. The trademark is invalidated if the owner fails to send the documents.
If the owner does not respond to an inquiry from the Patent and Trademark Office, a trademark is considered dead. In some cases, the office may ask for examples or clarifications about how the mark is being used. Failure to answer the question renders the mark null.
• Express abandonment
If a mark holder doesn’t wish to use their mark anymore, he/she can ask the Trademark and Patent Office to cancel the mark. A third party that has pre-existing rights can file a Notice to Oppose to allow an applicant to decide to give up a mark.
An express abandonment does not affect the Common Law rights that the owner may have in the mark. After the mark is removed, the rights of the owner in the mark are not lost.
How do you acquire a dead trademark?
All trademarks are stored in the United States Patent and Trademark Database. The database should be checked by businesses to ensure that the trademark they are using is unique. A mark that is registered and marked as “live” can only be used by the owner. A mark that is “dead” can be registered by another business, but this is often difficult.
Even though a trademark may be listed as deceased, another company or party could still be using it and thus have the Common Law rights. It can be difficult for a business to acquire a trademark that has been widely used and to transfer it to another product. The new owner may also benefit from the brand’s previous recognition.
It is unlikely that the original business will sue. It is unlikely that a brand will sue you if they don’t take enough care to protect their trademark.
Even though the risk may not be significant, businesses should not underestimate the potential risk. It is important to research whether the original brand is still in existence and why the mark was dropped.
A business can also revive a trademark that has been lost if it proves that the trademark had been incorrectly abandoned. The Patent and Trademark Office will correct the situation if a trademark is killed for not being registered. However, the owner must prove that they filed the documents.
Start with a full Trademark search
Before you launch your new business, it is important to do a common-law trademark search for the name you wish to use. You must ensure that you are able to use the mark you choose, especially in the case where the trademark is deceased. This will prevent infringement and save you time and money.
Search the internet for your mark and then search the USPTO Trademark Electronic Search System. A trademark’s status as “dead” or “abandoned” means that the USPTO has ceased to prosecute that particular application. This doesn’t mean the owner has stopped using the trademark. In this instance, the owner could be entitled to common law rights.
A status that is expressly abandoned is also a red flag and should be investigated by your lawyer. Although searching the internet databases can be a great first step, it is not enough. You should hire professionals to assist you if you don’t have the skills to do full searches. It is important to understand why an application was rejected or why a trademark has been abandoned.
A lawyer can assist you with a common-law trademark search to determine if your trademark is eligible for registration. This type of research involves searching databases, financial, legal, and business records. You can then find out if anyone is using the same trademark as you, even though it is not registered in the Patent and Trademark Office’s (USPTO).
Remember that the Lanham Act states that a mark cannot be abandoned for more than three years from the date it was last used. To find out if the owner of the trademark is planning to resume using the mark, you can contact him or her. The contact information for the USPTO Trademark Electronic Search System can be found here.
Second Step: Apply to the USPTO
If you are the original proprietor of a trademark that is no longer in use, you can either file a new application to bring it back to life or just start using it again.
Although it is difficult to register a trademark that has expired, it is possible. This case proves. General Motors owned the trademark “Cadillac La Salle”, but had not used it since 1940. A company called “Aristide” attempted to register the trademark in 2004 and was successful. GM attempted to block the registration, but was unsuccessful because the court argued that GM did not have a serious intention to re-use it (also known as “residual goodswill”).
This case shows that, no matter how long it has been since the last use of the trademark, a company can prove its intention to continue using the mark. This is also known as “zombification” or “resurrection” of a trademark. It refers to a trademark which is dead but could regain its rights. Resurrection is dependent on the popularity of the original mark and how many consumers can still recognize it.
You must file an application to the USPTO in order to claim a trademark that is deceased. This applies the same way as you would for a mark that has never been registered. The USPTO will review the application and either approve or deny it.
Although it may seem like a good idea, there are many downsides to registering a deceased trademark. This can be a complicated matter. Post your legal need to UpCounsel’s marketplace if you require a consultation regarding the registration of a deceased trademark. UpCounsel only accepts the top 5 percent. UpCounsel lawyers are from Yale Law and Harvard Law. They have an average of 14 years of experience in law, including work for or on behalf companies such as Google, Menlo Ventures and Airbnb.