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Trademarks can live forever, but only if they remain unique and in use. Abandoned trademarks are typically those that are not in use and whose owner has no intention to restart use.
Abandonment comes in a couple different forms. Keep reading to learn more about abandoned trademarks, the implications of claiming one yourself, and how abandoned trademark applications fit in the mix.
In this article, we'll cover:
What Is an Abandoned Trademark?
There are two scenarios that can lead to trademark abandonment as defined in the Trademark Act.
A trademark is abandoned if it’s no longer in use and the owner doesn’t intend to restart use. Abandonment can also occur if a trademark that was once distinct becomes generic over time, no longer acting as a “source identifier” for the goods/services it promotes.
Let’s break down what this looks like.
- If a trademark is not in use and the owner doesn’t intend to restart use, its rights go away. Since trademarks earn rights from their use in commerce, unused marks eventually lose their rights. A trademark that has been unused for at least 3 years in a row is legally assumed to be abandoned. This means that, in the case of a dispute over potential trademark infringement, the owner of the abandoned mark would have to prove that they did intend to use the mark again.
- If a trademark becomes generic, it loses its rights. A mark that began as distinct can become generic if it morphs into an everyday word for the product/service it promotes. (This is a problem because generic marks are unable to receive trademark protection.) Such a mark can be deemed abandoned due to a scary sounding concept called “genericide.” For example, words like “trampoline” and “thermos” were once trademarked with the United States Patent and Trademark Office, but later had their registrations revoked—the marks became common words, ceasing to identify specific companies as the source of these goods.
Can I Use an Abandoned Trademark?
Claiming an abandoned trademark might seem like a great opportunity. At last! The mark you want is available! Well, maybe. Before you get too jazzed, there are a few important things to know.
When you browse the Trademark Electronic Search System, TESS, you’ll see the statuses “live” or “dead” next to trademark entries. On the surface, this is pretty self explanatory. The trademark is either active, or it isn’t. But if you dig deeper into that “dead” status, the waters get murkier.
TESS only accounts for a trademark’s status with the USPTO. A “dead” trademark, while inactive at the federal level, might not be abandoned entirely. The mark could have rights elsewhere.
Here are some questions you’ll want to answer before trying to claim a “dead” trademark as your own:
- Does the trademark still have common law or state rights?
Before using a trademark that’s “dead” with the USPTO, make sure it’s not active in another jurisdiction. A trademark can fail to maintain its federal registration and appear to be abandoned at first glance, but still have common law or state rights. To find out whether a “dead” federal trademark is alive somewhere else, start by checking state business and trademark registries.
- Are there similar active trademarks registered with the USPTO?
Just because a specific trademark registration is dead doesn’t mean there aren’t others like it that are active. The same trademark can be registered multiple times—maybe additional classes were applied for separately and the owner let some registrations lapse. For example, there are numerous dead “Coca-Cola” trademarks found in TESS. But this doesn’t mean you can register your own “Coca-Cola” trademark. Among other reasons, there are active “Coca-Cola” marks that would prevent your registration from going through.
Can an abandoned trademark be registered?
If a registered trademark is dead and your research confirms that it’s fully abandoned, it’s likely available for use and even registration. But you can’t simply start using the mark and retain the rights that registration provides. Once a trademark is dead, it’s dead. If you’re interested in using it and earning federal protection, you need to submit a brand new trademark application. You’re not simply staking claim on an old mark—you’re creating a new one.
To put it simply: federal trademark registration is the same whether you’re applying for a newly imagined mark or one that used to be active.
Want help with federal registration? Check out our Trademark Service, which includes attorney review of your application.
What Is an Abandoned Trademark Application?
An abandoned trademark application indicates that registration was applied for but the applicant failed to meet USPTO deadlines and paperwork requirements. For example, the applicant may have neglected to respond to an office action or failed to submit a Statement of Use for an application filed with an intent-to-use basis.
Somewhat confusingly, abandoned trademark applications that never reach registration are labeled “dead” in TESS just like trademarks that lose their registrations.
What if my trademark application is abandoned?
If your trademark application is dead and abandoned, you may be able to submit paperwork to revive it. The exact paperwork you submit will vary based on the specific reason for abandonment, so it’s important to understand the situation clearly. For example, if you accidentally miss the Statement of Use deadline, you submit a Petition to Revive. But if your response to an office action is incomplete, you submit a Petition to the Director.
You can check your application’s status in the Trademark Status and Document Retrieval system. The USPTO will also send you a notice in cases of application abandonment.