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Can i use a "cancelled" status trademark?

Los Angeles, CA |

I searched for a specific trademark term in uspto TESS and it says status cancelled. Does that mean I could use and/or register that trademark or use that word?

Attorney Answers 4

  1. You need to verify that the mark is not in use by the registered owner, which may have continued use (for example, a license) but that failed to renew the registration.

    Also, a third party may have started using the 'term' as a part of its business, but may not have an issued registration.

    You need to perform further research before adopting term as your trademark or for other uses.

  2. NO,"cancellation" means that the registration was canceled. There are many reasons for cancelling a registration. By far the most common is failure to maintain the registration. Trademarks must be maintained by filing various documents and paying various fees. If this failure occurs for an application prior to issuance of a registration, it is called "abandonment" since there is never a registration issued that can be "canceled." . If the failure to maintain is after registration, then it is called "cancellation" because the USPTO cancels the registration by removing it from the Principle Register (for distinctive marks) or Supplemental Register (for marks capable of becoming distinctive).

    Having said all that, what "cancelled" status means that registration cannot be cited against you if you apply for registration. However, there are other grounds upon which you can be refused registration. For example the former brand names ASPIRIN and ESCALATOR. They were "canceled" not because of failure to maintain the registrations, but because they became generic terms through incorrect usage. If a mark was canceled because it has become generic, then no one - not even you - will be able to register that mark.

    Bottom Line: Probably, but not necessarily. See an IP attorney that handles TMs.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

  3. The fact that the federal Trademark Office has cancelled the REGISTRATION for the mark does not mean the mark is no longer a protectable trademark. All it means is that its registration was cancelled. The mark may still be in use -- and, if it is, no one else is permitted to use it to brand the same or related products or services. Registration is useful, but not required. You need a trademark attorney to "clear the rights" to any mark that you want to start using in commerce.

    The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

  4. My colleagues offered insightful comments here. The bottom line, however, is that no one here can tell you. There are simply too many variables that may matter. Why was it canceled? This would be the first question we would need to understand.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Natoli-Lapin, LLC

    DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.

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