Wednesday, March 27, 2013

Free to Use Dead or Cancelled Trademarks?

Dear Rich: Am I free to use a trademark that is listed as "Dead" at the USPTO? That depends ... When the U.S. Patent and Trademark Office (USPTO) indicates that a trademark is dead, it means that the registration for the mark (or application for registration) was abandoned by the owner or canceled by the USPTO. The Live/Dead classifications refer to the USPTO's jurisdiction over the mark.
How do marks get 'dead'? There are various reasons why an applicant may abandon an application—for example, the applicant may believe that registration is unlikely, or perhaps the applicant decides to discontinue the product or service because of the marketplace. If a mark shows up as being abandoned during the application process, it often pays to dig deeper in the application file (use the UPSTO's TSDR database to read documents) to find out if the reason was due to an examiner objection. That may foretell what’s in store for your application. There is a different type of abandonment if a mark has been registered but then later abandoned or canceled. For example, a mark may be cancelled because the owner failed to file a Section 8 affidavit.
Dead doesn't mean "not in use." When a mark shows up as “dead," it’s possible that the mark is still being used, albeit in an unregistered status. As long as the mark is still in use, no one else can use it (in a way that would create the likelihood of customer confusion) without infringing it. (And keep in mind, many trademarks also "arise from the dead.") There are many ways to determine if a trademark is no longer being used. The simplest method is to call the company and ask if the product can be purchased. If the response is something like, “No, we haven’t sold that product in years,” then there is a chance that the trademark is truly abandoned. A presumption of abandonment arises after three years. If you can afford additional expenses, professional investigators can help you determine the extent of the company’s use. If you believe that a mark has been abandoned, even if it is showing up as live on the search report, you may file a Petition for Cancellation based upon abandonment with the Patent and Trademark Office.

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