Can I claim a dead trademark?
You may trademark an abandoned or dead trademark, providing that it would not conflict with any active trademarks or businesses. A “dead" trademark is often one that was abandoned during the filing process due to its owner's inaction, or cancelled after registration due to a failure to renew the registration.
There is a chance that the owner will revive the trademark or claim "common law" trademark rights, so it is best to consult with an attorney before attempting to file for a "dead" trademark.
If you wish to revive a trademark that you previously owned, you may do so by proving that you responded to all of the U.S. Patent and Trademark Office’s requests. The USPTO has information on reviving a mark here. If this is not the case, then you may file a new application for the previous trademark.
If you’re interested in learning more about how to trademark a "dead" trademark, contact us today to speak with a qualified trademark attorney.
Reasons for Trademark Expiration
Trademarks may expire due to several factors:
- Genericization: If a trademark holder is unsuccessful in preserving the exclusivity of a trademarked term, it may become a common term used to describe a general item or service. Consequently, the public may no longer associate the trademark with a particular brand, leading to a potential termination of the trademark by the United States Patent and Trademark Office (USPTO). Notable instances of this include "aspirin" and "dry ice", which are now commonplace terms, irrespective of their brand.
- Abandonment: A trademark could also be deemed abandoned if the holder discontinues its use without intentions of future use. Existing laws dictate that a trademark could be considered abandoned after three years of non-usage.
- Mismanaged Licensing: Trademark holders often license their trademarks to third parties but must ensure that the licensee maintains the quality of goods or services associated with the mark. Failure to exercise this control could lead to the potential cancellation of the trademark by a court of law.
- Incorrect Assignments: Trademark rights can be transferred, but this transfer must include the associated goods or services. A trademark only being sold, without any corresponding goods or services, could lead to its cancellation.
- Failure to Renew or Respond: A significant cause of trademark cancellation is the failure to correctly complete the application process. Statistically, a majority of applications encounter at least one failure. Trademark holders are required to furnish proof of their continued usage and intent to maintain the mark five and ten years post-registration. The USPTO does not remind the owners to submit these documents, and failure to do so can lead to trademark expiration. Similarly, failure to respond to an inquiry from the USPTO could also result in trademark cancellation.
- Express Abandonment: Trademark holders may voluntarily abandon their trademark through a request to the USPTO. This could occur if they no longer wish to use the mark or if a third party with pre-existing rights files a Notice of Opposition. However, express abandonment does not necessarily affect the common law rights that the owner might have in the mark.
If you're interested in trademarking a dead or abandoned mark, you may also want to read these articles.
The Trademark Process