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I would like to register a trademark. Per the USPTO site, it has been adandoned and is "Dead." Can I register the trademark now?

Elgin, IL |

The trademark name was filed in March 2008 and abandoned in December 2008. Their trademark name includes two more words than I want to trademark. I'm not sure if this affects the legality of pursuing to register the trademark name.

Attorney Answers 4

  1. You cannot adopt a trademark merely because it has been abandoned. Further, the trademark you wish to register is different from the abandoned trademark. You will need to retain legal counsel to conduct a trademark clearance analysis---abandonment in the trademark office of a similar trademark is only one of many factors that must be considered in a trademark clearance analysis. There are no short-cuts here---you need to retain counsel to perform an appropriate trademark analysis.

    One of the most common misconceptions among persons who do not practice trademark law is that trademark rights in the U.S,. arise from registration. Not so. Trademark rights arise from use in commerce, and registration is not necessary to have enforceable trademark rights. Registration has many advantages, and is highly recommended, but the mere fact that a trademark is not registered does not mean it cannot be enforced against an infringer. The purpose of a trademark clearance analysis is to consider not merely whether there are potentially conflicting registered trademarks, but also whether there are unregistered trademarks used in commerce which could cause a problem for you. This is not a "DYI" job---trademark law is complex and sophisticated, and any company that is engaging in branding by using trademarks needs to retain counsel to properly conduct clearance analyses and prepare and prosecute trademark registrations.

    And I have not even mentioned the many complex issues that arise regarding foreign trademark registration---it is no longer sufficient to consider whether you can get a U.S. trademark. Most companies engage in commercial activity via the internet which is global in scope. The role of IP/trademark counsel is to make sure a company lays a solid legal foundation so that it can grow without running into financially troubling roadblocks.

  2. If a trademark has actually been "abandoned" by its former user, then the product isn't being shipped any more and the user doesn't intend to resume use of the trademark. In that even, the legal doctrine is that another business can adopt the trademark for the same or similar goods.

    However, that is different from abandonment of a Federal Trademark Registration Application, which is what you seem to be asking about. Yes, abandonment of the application is suggestive of the fact that the trademark might actually be "abandoned," but it isn't conclusive.

    You're on the right track to be asking this sort of question. But for actionable legal advice, this is something where you should be confidentially consulting your own attorney with expertise in trademark law.

    This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA

  3. Probably you can register it but that is not certain because rights are based on use not on registration. In addition to a TESS search you need to do a Google search, in order to see if someone has established rights based on registered use of the trademark.

    Yes, the 2 extra words may make a difference if they were the 2 words that were relied on by the USPTO to allow the registration of the earlier mark. Without knowing the details of the 2 marks in question and the 2 extra words, we cannot really advise you in more detail.

    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.

  4. There are two issues to consider. You ask about obtaining a registration for a trademark. The trademark examiner at the USPTO will likely focus on other trademark registrations, and if there was a trademark application for a similar mark that was abandoned and never registered, the trademark examiner would not rely on it to refuse registration against your mark. But the examiner may rely on other registered marks for similar goods or services to refuse registration for a later trademark application.

    But there is another issue to consider. Namely, that trademark rights in the US are acquired through use in commerce. Federal registration has many benefits, but is not required. Thus,
    even if the prior application was abandoned, that does not necessarily mean that the owner does not have trademark rights. The owner of an unregistered mark can still sue you for trademark infringement. If the USPTO allows your trademark application, the owner of an unregistered mark could still petition the USPTO to oppose or cancel your registration.

    You should retain a trademark attorney to help you navigate these legal issues.

    This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.