DEAD or ABANDONED TRADEMARKS: Great opportunity or danger?

What is DEAD or abandoned trademark meaning? Can I claim  and start using a DEAD trademark?

If a USPTO application or registration shows a status of DEAD or abandoned on USPTO TESS (Trademark Electronic Search System), it means that specific application or registration is no longer under prosecution  or pending within the USPTO, and would not be cited by a trademark examiner against an applicant. But is it really DEAD enough to be adopted by someone else? Nonuse, enough to lose rights, is a little more complicated.

Trademark Act Section 45(1)5 provides:

    A mark shall be deemed to be “abandoned” ... [w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. Lewis Silkin LLP v. Firebrand LLC, 2018 WL 6923002 (TTAB 2018).

Opportunity or Danger: HAVE YOU DONE A THOROUGH SEARCH?

But what many searchers think is a thorough search is not what the USPTO calls a thorough search (see trademarkesearch.com). Trademark examiners search for trademarks  that may be likely to cause confusion, not just direct or identical hits.

What is abandonment date?

The date that a trademark application or registration goes abandoned depends on the reason that it goes abandoned.

Some abandoned  trademark applications can be revived during a short period of time after they go abandoned and cited against an application so a trademark search that disregards all DEAD or inactive trademarks may not be giving a clear picture of the status of a trademark. FREE trademark searches or searches done by inexperienced searchers may miss relevant information that may be costly to a business owner. (Will a Zombie Trademark be a good choice or will it come back to haunt you?) Regardless of the LIVE or DEAD status of an application or registration within the USPTO, the trademark owner may still claim common law rights in court or in an inter partes proceeding such as a Trademark Opposition of Trademark Cancellation.

 Most of the marks in this particular group of applications (Search = (“Harry Potter”)[COMB] and (Dead)[LD])) never registered for these goods and services although many are registered for other goods and services in other applications.

The DEAD marks shown below were abandoned for various different reasons with 40 never registering and five abandoned because of failure to file Sec 8 declarations of use (see Post Registration Timeline for more info). Most of these marks never registered for the goods and services listed in these applications (40), but many are registered for other goods or services.

A third party trying to register a famous mark belonging to some else may be refused, as in this example refusal, because of a False Suggestion of a Connection. This applicant also received a LIKELIHOOD OF CONFUSION refusal with another HARRY POTTER mark that was not DEAD.

FALSE SUGGESTION OF A CONNECTION

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the British author J. K. Rowling.  Although J. K. Rowling is not connected with the goods and/or services provided by applicant under the applied-for mark, J. K. Rowling is so famous that consumers would presume a connection.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §§1203.03, 1203.03(e).  See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); Univ. of Ala. v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

Another reason for a mark to go abandoned and become a DEAD mark is failure to complete the application process or failure to complete the process correctly. While someone else may apply for a mark that is DEAD, that does not mean that the mark is necessarily safe for anyone because the mark may still be in use even if it is not registered. It may however mean that the mark may register for the new user if the previous owner is not monitoring pending marks and did not oppose during the Opposition Period after the mark published for opposition or the previous owner did not attempt to cancel the mark. Trademark examiners do not and cannot take DEAD marks or common law marks into account when searching for Likelihood of Confusion conflicts with pending or registered mark. The owner of the DEAD or common law marks would have to pursue stopping the application themselves through another mean such as an Opposition process, Cancellation process, or in court.

Here’s an example of one the the refusals for one of the Harry Potter marks that went abandoned even though the mark is still in use by the owner.

FAILURE TO TIMELY FILE REQUIRED DOCUMENTS

“Current Status: Registration cancelled because registrant did not file an acceptable declaration under Section 8” may mean that the mark has been abandoned and no longer in use or that the owner is still using the mark but just did not keep up with filing requirements. Another common document failure is “Current Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued.” These statuses may mean that the mark has been abandoned and no longer in use or that the owner is still using the mark but just did not keep up with filing requirements such as Sec. 8 (declaration of use) or Sec. 9 (renewal) filings.

Another reason for a DEAD mark is: “Current Status: Abandoned because the applicant failed to respond or filed a late response to an Office action” may mean that the mark was merely descriptive, had an inadequate specimen, had a likelihood of confusion with pending or registered marks or other reasons. The mark may be abandoned by the owner or the owner (HARRY POTTER application at the bottom of the page was filed by Joanne Rowling) just did not competently answer the refusal or is no longer using the mark. While Harry Potter marks are an obvious example of famous marks that have extra protected status because of their fame, they have been used here to illustrate that a TESS record showing that a mark is DEAD is not the whole story.

Many FREE trademark search engines and services do not search or report the existence of DEAD marks. Why? It really complicates things and the sites are trying to make it look easy to do it yourself. The more potential facts, the more questions of conflicts and confusion come into play. Many FREE trademark search engines exist to sell some other product or service and appearing easy and cheap brings users to the site. Approximately seventy percent (70%) of USPTO trademark applications are refused with some being able to overcome the refusal and ultimately about half of all applications end up registering and about half go abandoned and end  up DEAD. (Maybe it isn’t that easy after all.)

What is the meaning of "dead" or "abandoned" trademark?

15 USC §1127: Abandonment of mark. A mark shall be deemed to be “abandoned” if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

What does “Application Status:  Abandoned - After Inter-Partes Decision” mean?

This means that the trademark application  was opposed and went through an opposition and the opposition was sustained (the applicant lost) by the Board or the application was withdrawn or some other type of decision by the TTAB Board.

If an application shows a status of dead or abandoned, it means THAT specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. However, it does not necessarily mean that there are not OTHER marks which the examining attorney would cite. Also, there is always the possibility that an abandoned application COULD be revived (e.g., if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant establishes that a response was sent, and the USPTO simply failed to match it with the file in a timely manner, then the case will be revived). Also, regardless of the status of an application within the office, the owner may still claim common law rights. Extracted from http://tess2.uspto.gov/bin/gate.exe?f=help&state=4005:u7fvf.1.1#FAQ_DEAD

Many trademark verification or search services disregard trademarks that are marked DEAD in search records. Unfortunately, this does not necessarily mean that a trademark is available for someone else to use.  The Lanham Act expressly states that "[n]onuse" of a mark "for 3 consecutive years shall be prima facie evidence of abandonment." 15 U.S.C. § 1127. Itc Ltd. v. Punchgini, Inc., 482 F.3d 135 (2nd Cir., 2007). A search  or search report that is done mechanically and/or without knowledge of trademark law, may “verify” or “clear” a trademark for use that is still being used by a prior user and that prior user may still claim common law rights. A direct hit federal search or an inexpensive SAME DAY REGISTRATION service would probably not reveal this information.

Meaning of DEAD Trademark Applications or Registrations (Third Party Marks)

Use In Response to Office Actions, Oppositions or Cancellations

It is common practice in response to refusals, in oppositions and in cancellations to introduce third-party use of trademarks to demonstrate that a mark is weak and, therefore, entitled to only a narrow scope of protection.  ROCKET TRADEMARKS PTY LTD. v. PHARD S.P.(TTAB 2010). DEAD applications or registrations are of not probative in this context ( IN RE KYSELA PERE ET FILS, LTD. (TTAB 2011)) and cannot be used to show third party use because a DEAD, cancelled or expired application or registration is only proof that an application was made.

Third party registrations are not evidence that said marks are in actual use, their existence indicates the terms may be recognized as having some significance for a particular trade. Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588, 592 (TTAB 1975) (the third-party registrations may be considered in the same manner as a dictionary to show a possible meaning or significance in a particular trade). The fact that the USPTO has allowed so many registrations containing a shared term may be used "to establish that [the] portion common to the marks involved in a proceeding has a normally understood and well-known meaning [and] that this has been recognized by the [USPTO] . . .; and that therefore the inclusion of [the shared term] in each mark may be an insufficient basis on which to predicate a holding of confusing similarity." Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406 (TTAB 1988).

MEANING OF EXPRESS ABANDONMENT

§ 2.68 Express abandonment (withdrawal) of application [37 C.F.R. Part 2-Rules of Practice in Trademark Cases]

An application may be expressly abandoned by filing in the Patent and Trademark Office a written statement of abandonment or withdrawal of the application signed by the applicant, or the attorney or other person representing the applicant. Except as provided in § 2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, affect any rights that the applicant may have in the mark which is the subject of the abandoned application.

Note: While § 2.68 Express abandonment  and TMEP §718.01(b) both say that ‘Rights in the mark not affected,’ an abandoned or cancelled mark will lose presumptions under the law if the registration was on the Principal Register. A valid and maintained Principal Registration carries the presumptions of validity, ownership, distinctiveness, and others that may shift a burden to the other party to overcome any prima facie presumptions. A common law mark (never registered or was abandoned or cancelled) does not have these presumptions making enforcement more difficult.

Many trademark searches or trademark verifications may show that a mark is DEAD but not show that the mark was EXPRESSLY ABANDONED. In a case of express abandonment, a prior user of the mark may have sent a “cease and desist” letter to the new applicant or registrant letting them know that they would be sued or opposed if they continued the registration process any further and that continued use of the mark was intentional infringement. In this case, a DEAD mark that is an EXPRESSLY ABANDONED DEAD mark is a red flag that a potentially big problem exists with registering this mark rather than showing it is available. A quick, do-it-yourself search may not reveal this information or worse may indicate that the mark is clear. Getting a cease and desist letter early in the process may be getting off easy compared to being sued or trying to defend against an opposition or cancellation after substantial funds have been invested already.

MEANING OF ABANDONMENT-FAILURE TO RESPOND

§ 2.65 Abandonment.  [37 C.F.R. Part 2-Rules of Practice in Trademark Cases]

(a) If an applicant fails to respond, or to respond completely, within six months after the date an action is issued, the application shall be deemed abandoned unless the refusal or requirement is expressly limited to only certain goods and/or services. If the refusal or requirement is expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services. A timely petition to the Director pursuant to §§ 2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a response that avoids abandonment of an application. (b) When action by the applicant filed within the six-month response period is a bona fide attempt to advance the examination of the application and is substantially a complete response to the examiner’s action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of abandonment is considered. (c) If an applicant in an application under section 1(b) of the Act fails to timely file a statement of use under § 2.88, the application shall be deemed to be abandoned.

Failure to respond is the leading cause of trademark application abandonments. Overcoming a refusal without knowledge and experience in trademark law is difficult and many refusals can’t be overcome even with knowledge and experience because the applications were for trademarks that have serious Likelihood of Confusion issues with registered or pending trademarks. Sometimes, the likelihood of confusion is with a junior user, someone who started using the mark later but got their application in sooner. In cases like this, a cancellation proceeding may be the answer for the senior, prior user who was late in getting their application into the USPTO.

Trademark Checklist

1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.

2. Check Right to Use  Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Likelihood of confusion refusals are very common refusals.

3. Check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Check Specimen  Is the trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.

5. Check Goods and Services ID   Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.

6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard?

Need help? Call 1-651-500-7590 or email  W@TMK.law.