Finding the perfect name or logo to represent your brand can be daunting. Not only do you need to think of something memorable, but you also need to make sure it’s not already in use or too similar to an existing trademark.
You are likely aware of the fact that you cannot register a trademark if the same one exists, but did you know that an abandoned mark could be considered “dead” and therefore be up for grabs?
If you’ve come up with a name you love that has been previously use and is now a dead trademark, your Intellectual Property attorney might be able to help you acquire it. Read on for a quick guide on how to adopt dead trademarks, and how to get in touch if you’d like any further information.
What is a Trademark?
A trademark helps point consumers to the source of goods or services. Having a registered mark also deters others from using the same or similar mark in commerce. A trademark can be a word, phrase, specific image, or logo used to identify your band.
If you register a trademark and somebody else tries to use it, you are legally entitled to demand they stop. You may also be entitled to damages in court.
What is a Dead Trademark?
In developing your brand, you may come up with what you think is the perfect trademark only to discover it’s already been registered with the United States Patent and Trademark Office (USPTO). But occasionally, a name you thought was spoken for, may be up for grabs for you to claim ownership of if it is dead, cancelled, or abandoned.
The USPTO would not cite a dead, cancelled, or abandoned trademark against your application for registration such that you may still be able to secure it for yourself.
What do I need to think about when considering adopting a dead trademark?
Although dead trademarks are potentially available for use and registration, there are some things you should consider before proceeding with adopting the mark as your own.
1. Why was it abandoned or cancelled?
One of the first things that you’ll want to determine is why the mark was abandoned or cancelled in the first place. The most common reasons include:
- Ongoing paperwork wasn’t filed on time or at all
- USPTO didn’t receive a response or received incomplete responses
- The owner didn’t keep up with the annual fees to maintain the registration
- The owner ceased use of the mark and could no longer renew the registration
Knowing the reason why a trademark is now dead or abandoned can assist with your application by helping you establish whether the original owner intended to allow the mark to lapse.
A mark may appear dead because it was too similar to an existing trademark or due to ‘genericity’ ( i.e. the name of the trademark becomes more commonly used as the name of the product). For example, Trampoline, Aspirin, and even Escalator are all dead marks now. If the mark abandoned because it is too similar to another, or due to another issue such as ‘genericity,’ this should stop you from proceeding as you will likely run into the same problems.
2. Is it still being used? Or does the original owner intend to return to it?
Using a name and having the registered trademark for a name are two different things. A trademark for which registration is dead or has cancelled may still be in use. Do your due diligence to determine if the original owner is still using the trademark or if they intend on using it again.
Be sure to check other countries the mark was used in as well. For example, a Canadian business may have allowed their Canadian registration to expire while they grow their American brand, but still have the intention of maintaining a presence in Canada. If you cannot figure this out on your own, a last resort would be to speak to the original applicant. But be forewarned that by contacting the original owner you would put them on notice of your intended use and they may oppose it.
3. What are the potential repercussions of acquiring a dead trademark?
If you want to bring life to a dead trademark, you should prepare to fight for your right to do so.
Even if you believe the trademark was purposely abandoned, an original applicant or registrant can still change their mind and may fight you for it. It’s vital, therefore, that you have all the evidence to show your entitlement to the mark, and that you can prove the original owner had no intention to resume their possession.
If you are not up for a potential battle in court, then trying to register a dead trademark might not be the right decision for you. Speaking to your intellectual property attorney can help you make this choice by talking you through the potential risks involved.
If you’re ready to put the work in, then buying dead trademarks could be a great option for getting the perfect brand name, slogan, and/or logo protected. Speak to a dedicated intellectual property attorney or lawyer if you’re thinking about applying to bring life to a dead mark to help you figure out whether it’s the right move for your business.
So, if this is something you’d like to go ahead with, give us a call today. Our trademark attorneys are ready and waiting to help you with any trademark inquiries or applications you need to make.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.