Entrepreneurs spend a lot of time trying to find the right marks to use for their businesses. Registering trademarks can help businesses to establish their brands and reputation while preventing others from using the same or similar marks. However, finding marks that are not already in use by others is becoming more difficult with the global economy. Finding marks that you want and registering them without potentially causing confusion with another company’s existing trademark is increasingly hard. If you perform a search of your intended mark and find that it is listed as dead on the U.S. Patent and Trademark Office’s database, you might wonder whether you can register it and use it for your business. A dead mark is one that has been abandoned and is no longer registered with the USPTO. While it is possible to register a dead or abandoned mark, other issues might make you avoid doing so. (Read more on if you can register an abandoned mark.) Here are several things that you should consider before you choose to register a dead or abandoned mark.
The Four Things to Think About
Before you apply to register a dead mark, you should ask yourself several questions. Here are four things for you to consider before you move forward with a dead mark.
1. Can you use a different mark?
The first thing that you should consider before applying to register a dead mark is whether you can simply use a different mark instead. If you have an alternative mark that you can use that will work for your business’s marketing plan, it may be better for you to avoid registering or using the dead mark. Using an alternative mark can help you to avoid potential losses that your business could suffer because of litigation or confusion.
When you use a dead mark, you might have missed important information during your search. If you did, you might face a potential infringement lawsuit. Using a mark that is still owned by someone else and is being used could also cause you to lose money and could harm your business. If you have an alternative mark that you could use, you should carefully weigh the benefits versus the risks before you move forward with the dead mark.
2. Why was it abandoned?
The next thing that you should think about when you are considering using a dead mark is why its former owner abandoned the mark. Many marks are abandoned because a business closes or turns in a new direction. The reason why it was abandoned is important to discover. There could be an underlying reason for why it was allowed to die that might harm your business in the future.
You will want to check if the mark is dead because the previous company didn’t complete its filing. If this is the case, the former company might still be using the mark in commerce. This would give the company common law rights to the intellectual property. In that scenario, you could still be sued for registering the dead mark because your use could create confusion for the previous company’s customers.
Some trademarks may have expired, but they may have become so popular with the public that the marks might replace the products’ names with the public. One example is aspirin, which is the name of acetylsalicylic acid. Bayer trademarked aspirin in 1917 as a combination of two German words. However, the trademark for aspirin was lost in 1919, and the term has now become so generic that most people use it to refer to the common over-the-counter pain reliever. This issue is referred to as genericity when dealing with trademarks. If the dead mark is generally used by the public to refer to a product, you will have trouble registering it.
3. How long has it been abandoned?
It is important to pay attention to the length of time that has elapsed since the mark was abandoned. If it has not been dead for long, the owner may intend to use it again and may file paperwork to revive it. However, if it has been dead for three to five years, you might be able to register it. The USPTO people to maintain trademarks to be maintained for three to five years. If the previous owner has not filed the correct paperwork, you might be able to register it.
However, under the Lanham Act, a mark will not be considered to be abandoned until the previous owner stops using it and has no intention to reuse it. The previous company might still be using the mark even though it is no longer being tracked by the USPTO. Businesses that have not used their marks in three years are generally deemed to have abandoned them unless they can provide reasons. In this case, you will have to prove that the previous owner did not intend to continue using it. If the former owner objects, the process can be subjective and lead to problems.
If you want to use an abandoned mark, it is a good idea for you to contact the previous owner first. Ask for their permission before you file your application. While it might be hard to track down the previous owner to get permission, it is better to do this instead of risking potential legal problems later for your business.
4. Is anyone using it today?
Many businesses fail to check whether others are already using dead or abandoned marks. This step should not be neglected. After performing a standard search of your mark online, make sure to check whether it is being used in any country in which it was previously used. For example, a company might have allowed its mark to expire in the U.S. after it moved to Germany but might still intend to re-register it.
You will need to look for business names, websites, products, labels, and anything else that could have the mark. Even if the mark is being used in a different class than the class in which you intend to register it, you could still lose the mark if there is a likelihood of confusion.
Related: Our articles on how to conduct and trademark search and if two companies can use the same mark
Before you apply to register a dead mark, use the Trademark Electronic Search System through the USPTO to conduct a thorough search. This system keeps track of dead and abandoned marks. Other systems might not explore abandoned marks, which could be harmful to your business.
If you have unintentionally abandoned your trademark, you can file a petition to revive it with the USPTO within 60 days of when you receive the notice of abandonment. Otherwise, you will need to file a trademark application to revive your trademark. If you are wanting to revive someone else’s abandoned trademark, you might be successful if the former owner no longer uses it in commerce. To avoid potential legal problems with registering someone else’s dead mark, you should work with an experienced intellectual property attorney. A trademark lawyer might help to conduct the research on the mark and explain the likelihood that it will be approved. If you decide to move forward with your trademark application for a dead mark, your attorney can help you to register it before someone else does.