Whether or not a dead trademark listed on the Principal Trademark Register maintained by the US Patent and Trademark Office (USPTO) can be used and registered by another party is one of the most common questions asked about trademark law in internet question-and-answer forums.
The answer to the question of whether you can register a dead trademark or a trademark that has been abandoned on the Register is, however, “Maybe.”
Whether or not you have a right to use a dead trademark in commerce in the United States depends not on its current status on the USPTO Register but, instead, on whether or not the business that filed (and managed to lose) that Federal trademark registration is, in fact, still using it.
Who Has the Right to Use a Dead Trademark?
In answering the question of who has the right to use a dead trademark, you or the original trademark owner or applicant, the further question of whether that original applicant or registrant is still using it is key.
Under what is known as the “common law” (judge-made law or non-statutory law arising from a judicial decision), the right to the exclusive use of a trademark in the US belongs to the person who has been using it in interstate commerce the longest.
This is true regardless of whether the owner has ever registered the trademark with the USPTO. It is true regardless of whether the owner has registered the trademark and then lost the registration’s active status—or failed to complete the trademark registration process to begin with.
For example, if your founded your business, Detroit Hammer Company, in 2020, you would need to ensure that no other person or company has been using that name longer in order to guarantee your trademark registration. (We’ll leave aside the fact that this is a merely descriptive name this is going to be difficult to register for unrelated reasons, described elsewhere on this blog.)
However, if your Michigan trademark attorney runs a proper, professional pre-filing clearance search for your mark before filing the application for DETROIT HAMMER COMPANY and discovers that another company has been using that same name since 1975, that older company has the right to the use of the name—even if it has never filed a trademark registration application for it.
Likewise, if your trademark lawyer discovers that the older company did register DETROIT HAMMER COMPANY as a trademark in, say, 1985 that is now appears to be Dead on the Trademark Register, the issue of right of use still hangs over your head.
A dead trademark registration will not prevent your trademark from registering. The USPTO Examiners who review new trademark registration applications will only refuse applications on the basis of a likelihood of confusion as regards “live” registered trademarks.
A dead trademark will not cause your registration application to fail. In the example above, the dead 1985 trademark registration on the Register for DETROIT HAMMER COMPANY will not trip your newer use-based application up.
However, that does not mean that the right of use issue is resolved for you.
There are a number of reasons why a dead trademark might be listed as such on the USPTO Principal and Supplemental trademark registers.
Only one of them means that the trademark is now free and available for your use.
Reasons for Dead Trademarks on the USPTO Register
A trademark may be Dead for a variety of reasons having more to do with the attentiveness to filing or maintenance requirements than with the ongoing operation of the underlying business.
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The owner tried to register the trademark without the help of a trademark attorney—and failed.
Contrary to popular belief, trademark registration is not a matter of simple “form-filing.”
Filing a US trademark application requires that you prove to the USPTO that your proposed mark functions as a trademark, is actually in use in interstate commerce, is in use with regard to the specific goods and services identified in the application, is not merely descriptive or include some other statutorily unregistrable identifier, and does not present a likelihood of consumer confusion in relation to any other previously registered trademark.
That’s a mouthful, right?
That wordy paragraph actually implicates at least 6 different bases for the refusal of a trademark registration application.
Further, even if trademark registration were a simple form-filling process, you still have to fill out that form properly. Without an experienced trademark attorney assisting you, the odds of your “simple form” being “simply wrong” are greatly increased.
A dead trademark may simply represent an application incorrectly completed, incorrectly filed, incorrectly signed—and incorrectly remedied.
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The owner failed to respond to a USPTO Office Action Refusal in a timely manner (or at all).
Those 6 different bases for refusal noted above? The refusal comes by way of what is called an Office Action, filed in the application’s case docket by the USPTO Attorney Examiner tasked with reviewing it.
An Office Action may be “administrative” or “procedural,” requiring a quick revision to your service description or some other typographical matter.
An Office Action may be more “substantive,” refusing your application on the basis that your mark is merely descriptive or likely to confuse consumers, among other things.
Either way, when you receive an Office Action, a proper response must be drafted and filed within a finite timeframe or the application is abandoned and the mark is listed as—you guessed it: dead.
The owner of a dead trademark may simply have been too confused or too distracted to timely respond to an Office Action. Or, even with the help of a trademark lawyer, the owner may have decided, weighing all of the costs involved, to not invest further in the process with a response.
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The owner failed to respond to a third party Opposition or Cancellation proceeding filed.
Even if your trademark registration application sails past the USPTO Examiner, there still remains the possibility that a private party trademark registrant will Oppose your registration or, after your registration, seek to have it Cancelled.
Prior use in commerce is one of the bases for third-party Opposition or Cancellation trademark proceedings.
Such litigation is hugely expensive for everyone involved, and it may be, again, that the owner just decided not to invest in the fight.
That may be good news for you: the mark may actually no longer be in use by that owner.
That may also be bad news for you in that it could mean that there is another party out there with a similar trademark who is willing and able to shut down any use of any potentially infringing mark, whether it was that other owner—or you.
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The owner is actually out of business.
The best reason of all for the presence of a dead trademark on the USPTO Register is that the owner really is out of business or is no longer using the mark for any product or service it still purveys.
If this is the case, you may be able to register the dead trademark for your own use.
How Can You Be Sure a Dead Trademark Is Really Dead?
Even if you believe that the dead trademark is truly dead because it is no longer in use in commerce by the prior applicant or registrant, you still need to ensure that this is true before you adopt it for your own branding purposes and file your own trademark registration application.
How do you do that?
Research. Preferably with the assistance of an attorney and/or CPA skilled in the investigation of ongoing business activities, the current tax status of corporate entities, and so on.
A simple Google search will usually not be sufficient to ensure that, in attempting to register that dead trademark, you yourself are not infringing on the longstanding use of that mark by a well-heeled enterprise that simply, for whatever reason, managed to lose its US trademark registration.
Registering a Dead Trademark: The Bottom Line
The bottom line with regard to dead trademarks is that, even if you manage to successfully register that mark, you may end with a “weak” mark that cannot be enforced.
This is possible if you are registered—but without the longer use backing that registration up. If you do register under this circumstance, the prior owner whose registration is dead but whose use is not can seek to Cancel your registration at any time.
This is not something you want to deal with after investing in marketing, branding, signage, inventory, web design, social media presence, and so on and so on.
When you register a trademark, you want to ensure that you have registered a strong mark that will stand the test of time and give you the ammunition you need to enforce your own registration in Federal Court as needed.
The consequence of jumping too soon at a dead trademark, otherwise, is that your own may soon suffer the same fate.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.
Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.