Wednesday, September 15, 2010

Live, Dead and Abandoned trademarks: 'sup?

Dear Rich: I have been working on a comic story and character designs and names. I did a simple search on the USPTO site and do not find any LIVE use of the main character name I want to use. I see several ABANDONED applications. Some include purposes that I would intend on using the name for...namely: Comic book, coloring books, stickers, posters, prints, notebooks, lunchboxes, backpacks etc. Basically anything you can think of where a superhero would be seen on. I am aware that one of the application was recent, in 2008, but again it is ABANDONED. The abandonment of the name by two very big companies leads me to be concerned as to why they didn't pursue it. Spoiler alert. Some of our answers are more boring than others and this one is achingly boring, even by our low standards. We could have spiced it up with some meaningless chatter, but hey, sometimes, you gotta just go with the facts! 
Live/Dead. When you search the USPTO trademark records, you'll see Live/Dead categories like the ones shown above. 
  • The "Live" category has two subcategories: (1) If there is a serial number and no registration number, the application is active but not issued; or (2) if there is a registration number, the mark is active, valid, and federal trademark rights can be asserted. 
  • The "Dead" category also has two meanings: (1) If there is no registration number, then the applicant never made it through the application process; or (2) If there is a registration number then the applicant once had a federal registration but the registration is no longer valid either because the applicant stopped using it or because the USPTO cancelled it. In either case, federal rights can't be asserted (though the applicant may still be using the trademark and may also still claim common law or state trademark rights).
The meanings of abandonment. If you're wondering why an application or trademark has been abandoned, you can do the detective work and find some evidence by checking the TARR status of the mark, or if necessary by reading through the documents you can access for free via theUSPTO's TDR (Trademark Document Retrieval). All this is accomplished by clicking around and reading the PDFs associated with the file. Usually, what you want to avoid is filing for a mark that was abandoned during the application process especially if the reason was because of strong examiner objections. For example, if an examiner had a good argument that the mark couldn't be registered, that would let you know you're in for a fight if you file for the same mark in the same class. Ditto if the application was abandoned because another company opposed the application. If a registered mark was killed, the most common reason is that the owner abandoned it and didn't file a statement of continued use, resulting in cancellation. Often it's okay to step in and begin a similar use but you should always check the marketplace to confirm that the previous owner is not still claiming rights without the registration.