Key Takeaways:

  • Trademark Abandonment occurs when a registered trademark is not actively used or maintained, leading to its removal from the USPTO database.
  • Trademark Rights can still exist under common law, even if a trademark is abandoned in the federal registry.
  • Dead vs. Abandoned Trademarks: A dead trademark does not always mean it is free for use, as previous owners may still have legal claims.
  • Reacquiring an Abandoned Trademark involves conducting thorough research to avoid infringing on existing rights and potentially filing a new registration.
  • Common Causes of Trademark Abandonment include non-use for three consecutive years, genericism, improper licensing, or failure to enforce rights.
  • Buying or Using an Abandoned Trademark requires checking USPTO records, performing a common law search, and assessing potential legal risks.
  • Legal Steps to Secure an Abandoned Trademark include filing a new application, demonstrating intent to use, and potentially negotiating with previous owners.
  • UpCounsel can connect businesses with experienced trademark attorneys for guidance on using, registering, or acquiring an abandoned trademark.

An abandoned trademark is a registered trademark that either wasn't used or was used improperly, like in cases of trademark dilution, registration expiration, excessive licensing, non-enforcement of exclusive rights to a trademark, and trademark abandonment (three years of disuse).

A trademark identifies the source of goods and distinguishes your goods from the goods of competitors. Trademarks protect intellectual property rights during interstate commerce, while trademark laws prevent consumer confusion. 

The agency that registers trademarks is the United States Patent and Trademark Office (USPTO). The marks can be registered on anything directly related to company's products and services, such as business names, slogans, words, phrases, images, shapes, colors, scents, sounds, logos, and symbols.

Trademark Rights

Commercial use of a trademark establishes your trademark rights in the U.S. Though not required, registration with the USPTO provides you with exclusive rights for the trademark usage and the ability to take to court anyone infringing on your rights. You must actively protect your trademark by spotting and dissuading any infringement attempts.

What is a Dead Trademark?

After registration, the law requires you to actively use the trademark by affixing it to your business's goods, displays, labels, containers, and documents. After the registration, the trademark must be maintained by filing a declaration of continued use. A trademark registration becomes dead when the application wasn't completed or maintained. Once you stop using the trademark, your trademark rights become abandoned, creating an opportunity for someone else to acquire the rights. 

A dead trademark is not always available for use or registration by someone else because the original registrant might still be using it, and thus retain common law trademark rights. Search the USPTO website to learn why the trademark was abandoned. You might be able to acquire the trademark depending on the circumstances of its abandonment.

Understanding Common Law Rights in Abandoned Trademarks

Even if a trademark is listed as "dead" in the USPTO database, the previous owner may still have common law rights if they continue using the mark in commerce. Common law trademark rights arise from actual use rather than formal registration, meaning that even if a trademark has been abandoned at the federal level, the original owner could still prevent others from using it.

To determine whether an abandoned trademark is truly available, consider:

  • Searching state trademark databases and business registrations.
  • Investigating whether the original owner is still selling products or services under the name.
  • Looking at online and social media presence for continued brand association.

If common law rights exist, the new user may face legal challenges for trademark infringement.

How to Use an Abandoned Trademark

Before using an abandoned trademark, speak to a trademark and branding attorney and find out why the application was abandoned. Search common-law uses of the mark, state corporate names and trademark registrations as well as domain names.

You must clear the rights before using the mark to avoid infringing on someone else's intellectual property, which could cost you time, money, and reputation.

  1. Find out when and why the trademark was abandoned.
  2. Check the registration status of the trademark on the USPTO website and in databases of all states where the trademark was used.
  3. Start using the trademark for your products or services to acquire trademark rights.

For greater protection of your exclusive rights and to prevent the previous owner from using the trademark again, consider registering the trademark with the USPTO and with the states where you conduct business.

Steps to Reclaim an Abandoned Trademark

To legally reclaim an abandoned trademark, follow these essential steps:

  1. Confirm Its Abandonment
    • Search the USPTO Trademark Electronic Search System (TESS) to determine its status.
    • Check the reason for abandonment (e.g., failure to file maintenance documents vs. true non-use).
  2. Conduct a Comprehensive Search
    • Use common law searches, business directories, and online presence checks.
    • Verify state trademark registrations.
  3. Assess the Risks
    • Even if a mark is abandoned federally, there could be legal challenges if the previous owner claims continued use.
    • Determine whether consumer confusion could arise if you start using the mark.
  4. File a New Application
    • If the mark is available, file a fresh trademark application with the USPTO.
    • Choose the right classification and provide proof of intent to use.
  5. Monitor for Opposition
    • Once published in the USPTO Official Gazette, previous owners or others may challenge your claim.

Legal guidance from a trademark attorney can ensure a smooth application process.

Trademark Abandonment Causes

Three consecutive years of nonuse makes the trademark abandoned and opens it for possible use by third parties. Sometimes, you can reacquire your trademark rights if you prove your intention to use it again.

For nonuse rebuttal, show evidence of your intention, such as advertising featuring the trademark or distributing the trademarked goods. For excusable nonuse, show proof of circumstances that you had no control over, such as seeking approval from a regulatory agency for goods manufacturing.

Other causes of trademark abandonment are:

  • Trademark assignment: when the owner assigns the rights to another party but fails to maintain control over their proper use.  
  • Genericism: when a trademark becomes too widely used.
  • Excessive licensing: when a trademark owner licenses the rights but is unable to maintain control over the trademark.
  • Failure to enforce: when the owner takes no active measures to prevent unauthorized use of the trademark by third parties.

Initially, you can register a trademark for 10 years. At the five-year mark, you must file a Section 8 affidavit to retain the rights. After 10 years, file a Section 9 affidavit for the trademark renewal.

Excusable vs. Non-Excusable Non-Use of Trademarks

Not all cases of non-use result in trademark abandonment. The USPTO differentiates between excusable and non-excusable non-use:

  • Excusable Non-Use:
    A trademark owner may maintain rights if they can prove a valid reason for temporary non-use, such as:
    • Government regulations preventing product sales.
    • Ongoing business restructuring or litigation affecting operations.
    • Uncontrollable natural disasters or pandemics.
  • Non-Excusable Non-Use:
    If a trademark is not used in commerce for three consecutive years without intent to resume use, the mark is presumed abandoned. Common examples include:
    • The business shutting down.
    • Lack of marketing or product availability.
    • Intentional discontinuation of the brand.

If a trademark owner can prove valid excusable non-use, they may retain their rights despite a lapse in active use.

Considerations Before Purchasing a Dead Trademark

  • If the mark has been abandoned for three to five years, most likely you're safe. But beware that a non-active mark in the USPTO database could still be in use by the original owner. Even if you prove that the original owner has no intention of using it again, you still risk legal problems.
  • It is best to get permission from the original owner before using the trademark. Make sure to also check all countries where the mark was used.
  • Evaluate the worth of using this specific mark rather than the alternative one and whether you are ready to face possible legal issues.

Risks of Using an Abandoned Trademark

Before adopting an abandoned trademark, consider the potential risks:

  • Legal Disputes:
    • The original owner may attempt to reclaim their rights, leading to trademark litigation.
    • Third parties with similar marks might oppose the new registration.
  • Brand Reputation Issues:
    • The abandoned trademark may have a negative history (e.g., legal issues, customer dissatisfaction).
    • Rebranding under a previously abandoned name might not be as beneficial as creating a new, unique brand.
  • Potential Costs:
    • If legal challenges arise, the costs of defending trademark rights can be substantial.
    • Re-establishing brand recognition and consumer trust may require significant marketing investment.

To mitigate these risks, conducting thorough due diligence and consulting a trademark attorney is highly recommended.

Frequently Asked Questions

  1. Can I use an abandoned trademark immediately?
    Not necessarily. You must first determine if it is truly abandoned and check for common law rights or ongoing business use by the previous owner.
  2. How long does a trademark have to be unused to be considered abandoned?
    Under U.S. trademark law, a mark is presumed abandoned if it is not used for three consecutive years with no intent to resume use.
  3. Can a trademark owner reclaim an abandoned trademark?
    Yes, if the original owner can provide evidence of intent to resume use, such as marketing efforts or business restructuring, they may argue against abandonment.
  4. What happens if I use a dead trademark without registering it?
    If the trademark still has common law protection or an existing business association, the original owner may file a legal claim for infringement.
  5. How do I legally acquire an abandoned trademark?
    You must verify its availability, conduct a comprehensive search, and file a new application with the USPTO. In some cases, negotiating with the previous owner for transfer rights may be necessary.

If you need more information about an abandoned trademark, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.