Anyone seeking to register a trademark is first encouraged to conduct a search with the United States Patent and Trademark Office to ensure that the mark is not already in use by another business or brand. The hope is that the trademark is unique enough that the owner can move forward with the registration process without worrying about infringing on someone else’s rights.
In conducting a search you may find a mark that is similar to yours that has been marked “abandoned” by the government. Does that mean you’re free to move forward with your plans for registration?
As with most things in intellectual property law, it depends.
How Does a Trademark Earn an “Abandoned” Status?
A trademark can be declared “abandoned”, “dead”, or “canceled”, for a number of reasons, including:
- Failure of the owner to use the trademark in commerce
- Failure of owner to renew the trademark
- The trademark was used improperly
- The trademark was expressly abandoned
- The trademark was canceled in a cancellation proceeding
And, just because a trademark is marked abandoned, does not mean that the owner has lost all of their rights.
While a person or company may have abandoned their federal trademark registration, they may still have common law rights from using the mark in commerce before anyone else. If you use a mark and another company comes after you for infringement, you may still indeed be liable.
How Can I Safely Apply for a Trademark that’s Been Abandoned?
The best course of action to take if you’d like to use a trademark that’s been marked abandoned is to work with a trademark lawyer. He or she can help you properly research the status of the mark and proceed down a path that ensures that you are not infringing on someone else’s trademark or common law rights.
If you’d like help reviewing your options, feel free to contact our New York and South Carolina trademark attorneys at 888-666-0062 to schedule a consultation.
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.
Law Office of Jason H. Rosenblum, PLLC © 2018 All rights reserved.
