Like the good, diligent, responsible entrepreneur that you are, you’re searching the USPTO trademark database before deciding on a trademark for your business. Inevitably, you stumble upon a trademark record for the name you want to use, and the status says DEAD. What does that mean?
What is a dead or abandoned trademark, why is it so important that you not disregard them, and what secrets can you find hidden within them?
Whether I’m preparing a trademark application for a client or breaking it down for my DIY course, BRANDISH, the trademark application process starts well before you hit that ‘SUBMIT’ button on the trademark application. It starts with a thorough clearance search. One part of the clearance search is searching the USPTO’s TESS database, where all the trademark records are housed. And when you’re doing it, it’s pretty likely that you’ll run into at least one record of a trademark that says DEAD.
If you’re not seeing any dead records when you’re doing a trademark clearance search, you’re likely not searching broad enough. So if that’s you, check out BRANDISH, where I show you the secret search techniques that us trademark lawyers use.
A dead trademark is one that’s no longer under prosecution of the USPTO, meaning that it won’t be used to bar or prevent your trademark registration. The USPTO won’t take the dead trademark records into consideration when they’re evaluating your application.
But just because a trademark is dead, doesn’t mean that you’re totally in the clear to use it.
If you run across a DEAD trademark that is identical or similar to yours that doesn’t automatically mean it will be available for you to use or register. A trademark will become dead if it’s abandoned or canceled. It means that either the applicant failed to meet some requirement: maybe they didn’t respond to an office action on time, or their response wasn’t accepted, or maybe somebody successfully opposed the trademark registration.
Whatever happened, the trademark was never registered and it eventually became abandoned and thus, was marked as dead. Or it could mean that the trademark was registered at some point, but it was canceled by a third party or the owner didn’t file the renewal or maintenance documents. The fact that a trademark is dead, that, in itself, isn’t really that important. What’s really important here is why it’s dead.
What killed this trademark? That’s what you wanna know. That’s where the real treasure is.
Step 1. The Trademark Status and Document Retrieval, or TSDR, is where you can find all the dirty details about a trademark. You can enter the serial or registration number for the trademark record into the TSDR search bar.
Step 2. The ‘Status’ will give some clue as to why the trademark is DEAD. Often, an application was abandoned because the applicant failed to respond to an Office Action.
Step 3. If the applicant did not respond to an office action, or if there was a successful cancellation or opposition, it is important to know the details of how and why that happened. Click the ‘Documents’ tab to dig further. You’ll be able to find the Office Action under the Trademark Documents section and any opposition or cancellation documents under the Proceedings Documents section.
Step 4. Upon opening the Office Action, you may find that the USPTO cited a Section 2(d) likelihood of confusion refusal.
This means the Examining Attorney thought the applicant’s trademark was confusingly similar to another registration and, therefore, refused registration. The applicant did not respond to the office action, and so the application was abandoned and subsequently marked DEAD.
What this means for you is that, if you submit an application for the same or a similar trademark, it is likely that yours, too, will receive a similar likelihood of confusion refusal.
Even though a dead trademark won’t directly impact your trademark application or your chances of registration, you certainly cannot disregard them altogether. While a dead or abandoned trademark won’t be used in the USPTO’s evaluation of your application, those records can give you a really nice glimpse into the potential future of your application and your trademark.
The clearance search is the most important part of the trademark application and registration process, and it’s more than just a quick search and browse of the internet or the USPTO database. Conducting a thorough clearance search, which includes digging into any of those dead records, helps to keep you from wasting your hard-earned money on a trademark application that will never go through and avoid potential legal issues from arising later.
Securing your trademark is vital to the success and growth of your business. And your business and your future self will thank you if you take the right steps to properly secure and protect your trademarks.