A trademark is a recognizable sign, design, or expression that identifies the goods or services of a particular source. Trademarks can be registered with the United States Patent and Trademark Office (USPTO) to receive more robust legal protection than those automatically granted under common law legal rights.
What is a Dead Trademark?
A dead trademark is what happens when a mark no longer has any type of federal trademark registration with the USPTO but did at one point in time.
Why Federal Trademark Rights are Important
When you register your trademark with the USPTO, you qualify for federal trademark rights. Specifically, you are able to pursue any potential infringing use by using the Lanham Act. The Lanham Act confers nationwide legal rights to trademark holders and allows the owner to pursue legal action in federal court.
How Does a Trademark Die?
There are a few ways that a trademark can “die”:
The Trademark is Abandonment
First off, trademarks can die if they are abandoned. Abandonment takes place when a trademark is abandoned by its owner. Abandonment typically takes place if the trademark has not been used in commerce for three years and the trademark owner does not intend to use it in the future.
The Trademark Becomes Generic
Another way a trademark can die is if it becomes generic. A trademark can become generic when it gets used so often in public to refer to the underlying product itself that the trademark is completely associated with that product and to the owner’s particular good or service.
For example, the trademarks for Aspirin, Cellophane, and Laundromat have all become genericized. This means that, unfortunately, even though a business originally registered and owned trademarks for those products, they no longer can enforce the elevated trademark rights that come with USPTO registration.
The Trademark Never Matured
A trademark can also die because it never actually matured. This takes place if the trademark application was filed under an “intent to use” application. This is what is filed when the trademark has not actually been used in commerce at the time of the application. Once the USPTO has issued a notice of approval for the trademark to the applicant, that applicant must submit confirmation within six months that the trademark has been used in commerce.
If the trademark is not actually used, or if the proper paperwork is never filed, then the trademark may be deemed dead.
The Trademark was Not Properly Renewed
Trademarks can also die if the trademark owner does not properly renew the trademark in the required time frames. Documents must be filed:
- Between the fifth and sixth year of initial registration;
- Between the ninth and tenth year of initial registration;
- Ever 10 years following this.
If the documents are not filed with the USPTO as required, the USPTO may declare the mark dead.
The Trademark is Licensed Improperly
Trademarks can also die when they have licensed out and that licensee somehow abuses the trademark. A trademark owner can license their trademark rights out to another, which allows the license holder to use the trademark in exchange for paying a fee to the trademark owner.
If the licensee does not use the trademark in a proper manner, the mark can die. For example, if the licensee stops using the trademark on the particular product for which the mark was granted and instead uses it for a different product, there may be an issue and the trademark may die.
This is because the trademark rights were granted by the USPTO specifically as to the specified product or service that was contained within the actual trademark application.
The Trademark was Petitioned to be Canceled
A trademark may also die if the trademark was petitioned to be canceled by someone. These petitions may take place if another trademark owner believes your trademark is too similar to theirs and thus infringes on their trademark rights.
Someone can also submit a petition to cancel a trademark if the trademark has not been recently used in commerce. The trademark owner may answer the petition to fight the cancelation. But often, especially if the trademark has become less important to the owner over time, the owner might not answer. If this is the case, the USPTO will typically cancel the trademark based on that petition and list the trademark as dead.
How to Determine if a Trademark is Dead
You may have a big idea for a logo, unique business name, sign, or expression, and are wondering if someone has already acquired the trademark rights with the USPTO. The best thing to do is to search within the USPTO’s trademark database, called the Trademark Electronic Search System (TESS).
The TESS database contains all trademark registrations and pending applications. It also notes if a trademark has been abandoned or is dead. The USPTO has published some tips for searching through the TESS database.
It is critical to understand, however, that just because a trademark is dead, you cannot immediately conclude that it has been abandoned. For the reasons discussed above, a trademark owner might be continuing to use the trademark while unaware that they mistakenly allowed their trademark to lapse.
How to Acquire a Dead Trademark
If you are looking to use a dead trademark for your business, there are steps you can take to acquire the dead trademark rights.
First off, you should research the use of the trademark in public. Even if a mark may be declared dead by the USPTO, someone could still be using the trademark and therefore have common law rights to the trademark.
Moreover, if the trademark is no longer used but used to be, it may be widely recognized by the public and associated with a particular product such that you would not benefit from using it yourself.
If the use in commerce is unsubstantial or nonexistent, you can seek to have that trademark canceled with the USPTO. You can then submit your own trademark application to the USPTO to gain trademark registration of it.
There is still some risk involved. If the trademark has simply been abandoned, the original owner of the trademark could potentially pursue legal action against you.
However, this is probably unlikely because the original owner did not maintain the original trademark in the first place. It may make sense to contact the mark owner and have a conversation about their intended use of it in the future.
In general, it is a good idea to consult an intellectual property attorney if you are looking to acquire a dead trademark. The attorney can make their own strategic assessment of your particular facts and circumstances to advise further on the risk factors and associated likelihood of success.
