Abandoned Trademark – Brainstorming brand names, logos, and other trademarks are always difficult tasks when you start a business. Protecting them can be even harder when you’ve discovered that someone else has already attempted registration of your ideal trademark, but the mark is now listed as either “dead” or “abandoned” by the USPTO.
According to the Patent & Trademark Office:The USPTO states that “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.” Trademarks registrations can be abandoned for any number of reasons, such as, failing to respond to a USPTO Office Action or failing to file a statement of use. So while you could theoretically register a dead mark, there are other potential pitfalls.
For example, just because the USPTO lists a mark’s particular status as “dead” does not mean it is available to register or even available for use without registration or consequences. The registrant very well may have abandoned the federal trademark registration, but is still using the mark, thereby still establishing their common law trademark rights. In other cases, a trademark may have acquired so much goodwill and recognition from consumers that reviving the dead mark (by anyone other than the original registrant) can be difficult and expensive.
Other factors to consider include how long the mark has been abandoned. If the mark hasn’t been used for 3 years, it’s presumed to be abandoned unless the owner can prove to the contrary. But, the original owner can still stipulate that they have been using the trademark and had an acceptable reason for not maintaining the mark in the federal registry.
It’s important to determine how much a dead or abandoned mark is worth to you and your business. How essential is it to use that specific mark? Ultimately, the benefits of pursing such a mark must outweigh the potential liabilities. Give us a call today to discuss your options in obtaining registration for a dead or abandoned mark and how Grell & Watson can help protect your most valuable assets.