DEAD or ABANDONED TRADEMARKS

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).

HAVE YOU DONE A THOROUGH SEARCH INCLUDING DEAD MARKS?

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.

Lack of Use in Commerce (nonuse for three years with no intent to resume) Results in Abandonment of a Mark Leaving Room For Another to Use the Mark

"An intent to resume use of the mark formulated after more than three years of non-use cannot be invoked to dislodge the rights of another party who has commenced use of a mark—thereby acquiring priority rights in that mark—after three years of non-use." Imperial Tobacco Ltd., Assignee of Imperial Grp. PLC v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990).

Once a mark is abandoned, it enters the public domain and another party can appropriate it. Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd. P'ship, 34 F.3d 410, 412 (7th Cir. 1994). With no other parties using a mark, the new user becomes the senior user of the mark. "It is axiomatic in trademark law that the standard test of ownership is priority of use." Sengoku Works v. RMC Int'l, 96 F.3d 1217, 1219 (9th Cir. 1996).

See Specht v. Google Inc (N.D. Ill., 2010).

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.

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.

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).

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 ,one of the most likely explanations is that a prior user of the mark may have sent a “cease and desist” letter to the new applicant letting them know that they would be sued or opposed if they continued the registration process. A direct hit federal search or an inexpensive SAME DAY REGISTRATION service would probably not reveal that the DEAD mark was EXPRESSLY ABANDONED and that the mark probably had a strong opposition by a prior user right off the bat.

Note some FREE trademark search services don’t even have DEAD trademarks in their databases.

Many  trademark problems, refusals & delays can be avoided or overcome by using Not Just Patents® Trademark Services. We do not just fill out an application and submit it, we work to protect your protectable legal rights and to keep costs as low as possible to get you less refusals and delays. We have many, many examples of common refusals that could have been avoided both by pro se applicants (no lawyer or a filing service that does not record their name on record because they are not attorneys) and applicants represented by attorneys. Call us at (651) 500-7590 and get a quote and ask for an example.

→Not Just Patents ® Legal Services provide a broad range of services for Intellectual Property Protection. If you are unsure what type of product or service protection is best for your business or just have a question, please call–a brief initial consultation is free at 1-651-500-7590.

Verification by Not Just Patents® Legal Services

A strong application that matures into a registration protects legal rights and protects investments in a product or service that can last through a long product life.

An application that only meets minimum requirements for filing (all the right blanks filled in and no direct search hits) may not ever issue or may not protect legal rights.

The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, about half of applications never register. Many applications do not meet federal trademark law because they have a likelihood of confusion with other registered or pending marks, are merely descriptive or generic, have specimens that do not show the trademark functioning as a trademark, have inadequate specimens of use and many other reasons. Getting a trademark registration does not have to be a gambling process.

 Trademark Checklist

1. Check Inherent Strength  Does each 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.