Understanding Dead Trademarks
A dead trademark refers to a trademark application or registration that is no longer actively pending, as indicated by the U.S. Patent and Trademark Office. This status occurs when a trademark registration is not renewed or when an applicant fails to respond promptly to an office action or notice of allowance. Once a trademark is marked dead, the applicant loses the protections provided by federal trademark registration, although they may still retain common law rights.
Explaining Dead Trademarks
Dead trademarks are no longer recognized as actively pending by the USPTO. These trademarks were either previously applied for or registered with the federal government but have lost the benefits associated with registration due to specific circumstances. It’s important to note that a trademark can be marked dead even if it has not been officially abandoned.
There are several issues that arise when a trademark is dead:
- The applicant is no longer permitted to use the federal trademark symbol.
- The trademark may only have regional protection, if any.
- Competitors may potentially gain rights over the trademark.
- There is less legal force behind trademark cease and desist letters.
Abandoned trademarks are quite common, with hundreds of thousands being abandoned each year.
Can I Use a Dead Trademark?
It is possible to claim a trademark once it is marked as dead. The “dead” status does not prohibit you from registering the trademark. However, if the original owner continues to use or decides to use the trademark again after a period of time, they may still retain strong rights to the trademark. In such cases, using the trademark could expose you to a claim of trademark infringement.
Before using or attempting to register a dead trademark, consider the following:
Length of Abandonment
If a trademark has not been used for three years, it is considered presumptively abandoned. However, if the trademark is still listed as “live” with the USPTO, you will need to go through the trademark cancellation process to have the rights revoked. Generally, the longer a trademark has been abandoned, the less likely you are to face opposition from the original owner.
Reasons for the Dead Trademark
If a trademark is marked dead due to a failure to file a renewal, it is possible that the original owner is still using the trademark, and they may have simply missed the renewal deadline. You can verify this by searching online to see if the trademark is still in use.
The other common reasons for a trademark being marked dead are the failure to file a timely response to an office action or notice of allowance. Both of these require a response within six months. Often, these deadlines are missed when the applicant decides to abandon the trademark.
Trademark Still in Use?
If a “dead” trademark is still being used in commerce, it is advisable to avoid using it. The original owner will retain common law trademark rights to the mark.
Causes of Dead Trademarks
One of the best ways to avoid a dead trademark, especially during the application process, is to ensure that you do not miss any communication from the USPTO examining trademark attorney assigned to your application. Failure to respond to office actions is a common cause of trademark abandonment.
Approximately four months after filing a trademark application, the USPTO assigns an examiner to review the application. If corrections are needed, the examiner will reach out to you in what is known as an office action. There are various reasons for receiving an office action, including:
- Your trademark is too similar to an existing one, potentially causing confusion.
- Technical errors in the application or other issues.
- Descriptive or geographically misleading factors.
- Attempting to trademark a surname.
- The trademark is primarily ornamental rather than a brand identifier.
When you receive an office action, it is crucial to respond to the examining trademark attorney within six months. Failure to do so may result in a final office action, which provides little opportunity to save the application. To avoid a dead trademark, address all concerns raised by the USPTO examiner.
While failure to respond to office actions is one of the most common reasons for dead trademarks, there are other issues that can lead to the same outcome. These include trademark expiration, failure to file a statement of use, intentional abandonment, and successful trademark opposition or cancellation.
Common Law Trademark Rights
Even if a brand or product identifier is not registered with the government, it can still have common law trademark rights. This means that you could assert rights over a dead trademark, provided it is still being used in commerce. However, without federal registration, you need to keep appropriate documentation of use to support your claim.
Although common law protection allows for retaining rights over a dead trademark, it comes with several disadvantages:
- Limited protection to the geographic area of usage.
- The USPTO will approve new applications for the same exact trademark since they do not consider common law uses.
- Use of the unregistered trademark symbol (™) instead of the federal symbol (®).
- Common law rights may not prevent a competitor from using a similar trademark in a different geographic area.
While continued use will protect common law rights over a dead trademark, it is important to recognize that federally registered trademarks offer a wide range of benefits.
How to Revive an Abandoned Trademark
If you find yourself with a dead trademark, you can still regain your rights. For expired trademark registrations, renewing within the six-month grace period is crucial.
During the registration process, if a trademark is listed as abandoned, you can file a Petition to Revive. This petition is available if you fail to respond to an office action, file a statement of use, or request an extension within the specified time frame. To pursue this option, you usually need to file the petition within two months of the abandonment and explain why you missed the deadline.
Contact Garrity Traina
If you need further assistance with a dead trademark, don’t hesitate to contact Garrity Traina.