Dead Trademarks can be used much of the time but you need to be careful to understand why the mark is dead or you could risk a claim of infringement.
By Michael Kondoudis, Small Business Trademark Attorney
This is our COMPLETE guide to dead trademarks.
A trademark can “die” for any number of reasons. This guide explains what a Dead Trademark is, how a trademark can “die,” and what a Dead Trademark means for competing brands.
If you want to know about Dead Trademarks, including if you can use a Dead Trademark, then read on. This guide is for you.
What is a Trademark?
A trademark is a unique word, sign, or symbol that distinguishes a product, service, or business from the competition. The most popular trademarks are names, words, logos, and phrases. Trademarks protect words, symbols, phrases, and logos that identify particular goods or services.
A trademark owner can take legal action when a competitor tries to use the trademark (or anything confusingly similar) without permission.
Trademarks ensure that customers can easily identify the products they want in the marketplace and receive consistent quality service each time. Essentially, trademarks make products and services easier to spot in the crowd.
The U.S. Patent and Trademark Office (USPTO) regulates trademarks in the US. To register a trademark with the USPTO, you must file an application with the USPTO, which will review the application and decide whether to approve or deny it.
What is a Dead Trademark?
A Dead Trademark is a trademark that has been canceled by the USPTO, invalidated by a Court, or abandoned by its owner.
Every Dead Trademark was once registered or applied for, but the US Patent and Trademark Office doesn’t recognize it anymore because it has been abandoned by the owner, invalidated by a Court, or canceled by the USPTO.
The term “Dead Trademark” refers to trademarks that have lost their federal legal protections or were the subject of a failed USPTO trademark application. Dead trademarks are not protected by the USPTO or federal courts. Dead trademarks cannot be used to block pending trademark applications.
Every year many thousands of trademarks are abandoned, canceled, or invalidated. So, encountering a Dead Trademark is not uncommon.
What Does it Mean If a Trademark is Dead?
A Dead Trademark means that the owner of a trademark has lost federal legal rights to it. This means anyone can register the logo or phrase for their use. Many businesses take advantage of this by assuming ownership of the Dead Trademark so they can rebrand without putting much effort into creating something new. In this way, Dead Trademarks can present a unique chance for businesses to add new elements to their branding strategy.
When a trademark is “dead,” it means that anyone can use it without fear of legal repercussions from the original trademark owner.
A Dead Trademark is generally available for anyone else to register, making it an opportunity to take ownership of an old, inactive logo or phrase. Taking ownership of a Dead Trademark is a popular method for businesses to gain a new brand without starting from scratch.
How Does a Trademark Die?
A Dead Trademark happens when a trademark is abandoned by its owner, canceled by the USPTO, or invalidated by a Court.
Abandonment
Generally, abandonment occurs when a trademark owner stops using it in the marketplace to distinguish a product, service, or business from the competition. This means the trademark isn’t used to show that a product or service is different from the competition. Also, a trademark owner can request that the USPTO abandon its registered trademark.
When someone stops using their trademark, it is called abandonment. An abandoned trademark is a dead trademark and is unenforceable.
Cancellation
Generally, this occurs when the owner fails to submit renewal documents as the USPTO requires. In other words, they have either stopped using the mark or have not paid renewal fees to keep it active.
Trademark rights can last forever, but only when the owner maintains their registration at the USPTO. On certain anniversaries, the owner must submit certain documents to the USPTO. When a trademark owner fails to maintain a registration, the USPTO will cancel it for “non-renewal.” The USPTO can also cancel a trademark registration after a cancellation proceeding.
A canceled trademark is a dead trademark and is unenforceable.
Invalidation
Generally, invalidation occurs when a court determines that a trademark infringes another trademark, or the owner lets the mark become generic through misuse. Sometimes a court decides that one trademark looks too much like another. Or, if the owner does not use their trademark correctly, it might become generic, and the court will not protect it.
An invalid trademark is a Dead Trademark and is unenforceable.
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If a Trademark is Dead Can I Use It?
Yes, if a trademark is dead, you can probably use it. It is possible to use a Dead Trademark.
It is possible to claim a Dead Trademark, but there may be repercussions from the original owner if they decide to use it again in the future. So, while it is possible to claim a Dead Trademark, you may expose yourself to a claim of infringement if the original owner still has rights to the trademark and decides to use it again.
Ultimately, it is important to ensure that the trademark has been canceled, invalidated, or the original owner has stopped using the mark. Otherwise, the original owner could potentially have legal rights to the trademark and might challenge your use as trademark infringement.
Can You Register a Dead Trademark?
Yes, individuals and companies can register and use Dead Trademarks.
It may seem strange to think of registering a dead trademark, but it can be done in certain circumstances. Dead trademarks are those that have become abandoned or are no longer used by their owners. The USPTO (United States Patent and Trademark Office) will accept an application to register a Dead Trademark.
The first step is to consult an experienced trademark counselor or attorney to determine if the mark can be registered.
But Beware!
Dead trademarks can be tricky legal matters to navigate as they are not always easy to identify. They often change hands several times. Determining whether a trademark is dead requires a careful analysis to evaluate whether the mark has been abandoned, invalidated, or canceled.
Can You Revive a Dead Trademark?
Yes, if the Dead Trademark is the subject of an unsuccessful application you can file a petition with the United States Patent and Trademark Office (USPTO) can help to reinstate your application. The USPTO will review your petition and may allow you to continue with your trademark registration if all requirements are met.
When filing a petition to revive an abandoned trademark application, you must include certain information, such as the reasons why your application was abandoned and what will be done to address the issues that led to its abandonment. You may also need to prove that you are still interested in obtaining the trademark. Depending on the circumstances, you may be required to pay additional fees or undergo additional examination by the USPTO.
If your petition is approved, you will be allowed to continue with the trademark registration process, and your application will resume from its abandoned status. This can be lengthy and complicated, so it’s important to ensure all requirements are met before filing a petition. Once your trademark is successfully registered, it will be protected under federal law. You will have exclusive rights to use the mark for the goods or services specified in your registration.
Although filing a petition is necessary to revive an abandoned trademark application, it’s important to remember that there is no guarantee that the USPTO will approve your petition. Understanding the risks involved in pursuing a trademark registration before filing a petition is important. Additionally, you should consult with a qualified attorney to ensure that all requirements are properly met and that your application is handled correctly throughout the process.
With experienced guidance, reviving an abandoned trademark application can be a successful endeavor. Filing a petition with the USPTO may be your only chance to save your application and protect your brand, so it is important to understand the process of filing a petition and all that is required for success.
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For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).