Can I Use a Dead or Abandoned Trademark?

 

So what’s the deal…Can I use a dead, canceled, or abandoned trademarks?

Like everything else in law, it depends!

First things first.

You’ll want to conduct a search of the US Patent and Trademark Office’s database before you start the trademark application process. When searching, you will see that all of the trademarks in the database are marked as either LIVE or DEAD.

A live trademark is one that is active and under prosecution by the USPTO.

If the trademark is marked as LIVE, that means it’s either registered or pending registration…..use caution (and talk to a trademark lawyer) before attempting to register a trademark that is identical or similar to it.

A dead trademark will not be used in evaluating pending trademarks.

A DEAD trademark means that the trademark has been abandoned or canceled for one reason or another. Technically speaking, a dead trademark is available for use and registration by somebody else. However, just because a trademark is dead does not mean you are automatically guaranteed success if you try to register it. Rather, a dead trademark can provide valuable insight into the fate of your trademark. Seeing a dead trademark should also raise some flags and prompt you to figure out why this poor trademark was abandoned or canceled as it may be best to avoid this specific trademark altogether. Just because you can, doesn’t mean you should!

But just because it’s a dead trademark does not mean it’s available for registration.

When going through the analysis process of trademarks, you’ll find the dirty details in its history which will give you helpful insight as to what fate your trademark might have if you move forward with the registration process. Keep in mind: they do not consider the dead/canceled applications in this process. During the registration process, the USPTO compares your trademark to their full database of pending and current trademarks to see if there would be too many similarities between them.  If there is, they will issue an office action for a likelihood of confusion. This means that the USPTO considers your trademark to be too alike to an existing or pending one and that if they were to proceed with this registration, the general public could confuse your product, good, or service with another one that has already been registered or currently pending registration.

A trademark often becomes abandoned when the USPTO issues an office action which the applicant cannot or does not overcome. So while this trademark may be available, this also means your trademark would likely be confused with an existing/pending one and could encounter the same dreaded office action fate.

It is always best to contact an experienced trademark attorney if you receive an office action letter or need assistance with your trademark.