DEAD or ABANDONED TRADEMARKS

What does a status of DEAD or abandoned mean? Can I claim  and start using a DEAD trademark?

If a USPTO application or registration shows a status of DEAD or abandoned on 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 what many searchers think is a thorough search is not what the USPTO calls a thorough search (see trademarksearchtips.com). Trademark examiners search for trademarks  that may be likely to cause confusion, not just direct hits.

Some abandoned 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.

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 and do not include 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.

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.


ABANDONMENT-FAILURE TO RESPOND

[Abandoned ‘Passively’ by Applicant During Application Prosecution]

§ 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.

Here’s an example of an application (APP1) that was refused and abandoned for failure to respond to refusals for likelihood of confusion with a registered mark (REG1) containing the exact same first word, both for clothing sales. Had this applicant responded to the office action, this registration also would have been suspended because of likelihood of confusion with a earlier pending mark (APP2) with exactly the same first word that was also ultimately abandoned because of failure to respond to an office action because of likelihood of confusion with REG1. A direct hit federal search would have revealed REG1 if the applicants for APP1 or APP2 would have tried to verify if federal registrations existed for the first word (alone) of their potential trademarks. APP1 and APP2 were pro se (not represented by attorneys). Perhaps APP1 and APP2 were not aware of trademark law in the U.S. and that the first word of a registered trademark is often the dominant word. See Section 2(d) Office Actions for case law applicability for first word dominance in marks and case law finding decisions in the clothing field have held many different types of apparel to be related under Section 2(d).


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.


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