1. Trademark Rights
2. What Is a Dead Trademark?
3. How to Use an Abandoned Trademark
4. Trademark Abandonment Causes
5. Considerations Before Purchasing a Dead 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.

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.

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.

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.

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.