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A dead trademark is a trademark that was once registered or applied for and that the Patent and Trademark Office doesn't recognize anymore.7 min read
Updated July 13, 2020:
What Is a Dead Trademark?
A dead trademark is a trademark that was once registered or applied for and that the Patent and Trademark Office doesn't recognize anymore. Individuals and companies can register and use a dead trademark. When this happens, the original business can no longer use and seek protection for that trademark.
What Is a Trademark?
According to the USPTO, a trademark is a "word, phrase, symbol or design, or a combination of words, phrases, symbols, or designs, that identifies and distinguishes the source of the goods of one party from those of others." A service mark is the same thing but refers to a service instead of a product.
The owner of a trademark can take action in court if a competitor tries to use the trademark to promote their own products.
How Do I Build Trademark Rights?
You don't need to register a trademark in order to build trademark rights in the United States. In fact, you acquire these rights automatically when you use your marks in commerce and distinguish yourself from your competitors.
However, registering a trademark has many benefits like:
- Protects against the use of confusingly similar marks;
- Allows the owner to sue in federal court for trademark infringement;
- Discourages companies from using similar marks;
- Notifies everyone else that you are the one and only owner of the mark;
- Gives national trademark rights since the application date.
Trademark rights don't have an expiration date. As long as you keep using the mark and continue to pay the licensing fees, you remain the rightful owner of the mark. Trademark rights end when the owner doesn't use their mark for three consecutive years.
However, registering your mark in the USPTO Database (United States Patent and Trademark Database) might be beneficial to your business. When you register a mark, you are protected against the registration of similar marks. Also, the mark is valid all around the nation starting on the application's date, and you acquire the right to sue in federal courts, among other benefits.
Why Can a Trademark Die?
There are multiple reasons why a trademark can die:
When a mark holder is unsuccessful at keeping the use of a trademarked term limited, sometimes the public will start using it to describe a general item or service. Over time, the public no longer associates the trademark with a specific brand, and the trademark has no longer a meaning to exist. In this case, the Patent and Trademark Office can decide to kill a trademark.
This process happened to the term "aspirin," which is now a word commonly used to describe pain relievers, and it's not associated with the original manufacturer. Another example of genericity is the term "thermos," which today refers to any brand's insulated container for liquids.
Abandonment occurs when a mark holder stops using a trademark with no intention of using it again in the future. As already mentioned, under the current law, a trademark dies when an owner doesn't use the trademark for three consecutive years.
However, recent lawsuits such as Crash Dummy Movie, LLC v. Mattel, Inc..(Fed. Cir. 2010) prove that abandonment is not always permanent. If a trademark owner can demonstrate in court that they intend to resume the use of the mark, they can keep the trademark rights even after three years of no use.
- Poor Licensing
A mark holder can often license his trademark to a third entity, but he or she needs to supervise the franchisee and to make sure that the licensee is producing the same exact good or service. When a trademark owner fails to control these businesses, a court can decide to kill the trademark.
A mark holder can transfer the rights to another actor, but the transfer must include a sale of products. The owner can't sell only the trademark, as this would no longer represent the original product that the trademark was associated with. Without such a sale, the trademark dies.
- Failure to Respond / Lapse of Registration
Often, a trademark dies when the applicant fails to complete the application process properly. In fact, over 70 percent of the applications fail at least once.
The Patent and Trademark Office requires all right holders to send documents that prove that they are still using and intend to keep using the mark. Trademark owners need to file these documents 5 and 10 years after the registration. The Patent and Trademark Office doesn't contact the owners to remind them. If the owner fails to submit the documents, the trademark dies.
A trademark goes dead also when an owner fails to respond to an inquiry by the Patent and Trademark Office. Sometimes, in fact, the office can ask for clarifications or examples of how the mark is used. Failing to give an answer deems the mark dead.
- Express Abandonment
A mark holder can request to the Trademark and Patent Office the abandonment of their mark when he or she doesn't want to use the mark anymore. An applicant can also decide to abandon a mark if a third party with pre-existing rights to the mark files a Notice of Opposition.
However, an express abandonment doesn't affect the Common Law rights of the owner. The rights that the owner might have in the mark don't stop to exist after the mark is abandoned.
Acquiring a Dead Trademark: What Are the Risks?
The United States Patent and Trademark Database (USPTO) is a database where all trademarks are collected. A business should verify on the database that the mark they're using is in fact unique. If a mark is already registered and signaled as "live," then no one but the owner can use it. If a mark is "dead," then another business can attempt to register it, but it's often not this simple.
Even if a trademark is listed as dead, the original company or another party can be using the mark and therefore owning the Common Law rights to it. Also, a business can find it difficult to acquire a dead trademark that was once widely recognized by the public and transfer it to another product. At the same time, though, the new owner can benefit from the previous brand recognition.
The likelihood that the original business will sue you is small. If a brand didn't care enough to protect its trademark, it's unlikely that they will go to court and spend money to go after you when the Patent and Trademark Office approves your trademark application.
However, even if the risk is small, it's not impossible, and a business should not underestimate the risk. This is why it's important that you research if the original brand is still in business and why the mark was abandoned.
Also, a business can revive a dead mark if it proves that the trademark was incorrectly marked as abandoned. If the Patent and Trademark Office, for example, kills a trademark for a lapse of registration but the owner proves they filed the documents, the office will rectify the situation.
First Step: Complete a Full Trademark Search
Before launching your new business, you need to perform a common law trademark search on the name you want to use for your company. Especially in the case of dead trademarks, you have to make sure you can use the chosen mark to avoid infringement, a waste of your time, and monetary losses.
Start by searching the web for your mark, then search the USPTO's Trademark Electronic Search System. The dead or abandoned status of a trademark means that USPTO is no longer prosecuting that specific application. However, this doesn't necessarily mean that the owner doesn't use the trademark anymore. The owner, in this case, could claim common law rights.
An expressly abandoned status is also a red flag, and your lawyer will need to look into it. Indeed, searching through the internet databases is a good first step, but unless you are qualified to run full searches, you should hire a professional to help you. Understanding why an application was abandoned or why a trademark is dead is essential.
A lawyer can help you complete a common law trademark search and understand if your chosen trademark can be registered or not. This type of research includes searching through databases, news, business and public records, legal, and financial records. This way, you can find out if someone is using a similar, not just the exact same, trademark, even if the mark isn't registered in the Patent and Trademark Office (USPTO) database.
Keep in mind that under the Lanham Act, a mark can't be considered abandoned for three years after the last time it was used. You could contact the previous trademark's owner to find out if he or she intends to resume use of the mark. You can find the contact information on the USPTO's Trademark Electronic Search System.
Second Step: File An Application at the USPTO
If you are the original owner of a dead trademark and you want to revive it, file a new application or simply begin using it again.
Registering a dead trademark might be hard, but definitely not impossible, as this case proves. General Motors was the owner of the "Cadillac La Salle" trademark but hadn't used it since 1940. In 2004, a company named "Aristide" tried to register it and succeed. GM tried to fight the registration but didn't win because the court argued that GM didn't have a serious intent to re-use the mark (this is also called "residual goodwill").
This case also proves that no matter how many years have gone by, if a company is able to prove the intention to resume the use of the mark, it might win. This is sometimes called "zombification" of a mark and refers to a trademark that isdead but might resurrect. Resurrection depends on how popular the original mark was and how much consumers are still able to recognize it.
To claim a dead trademark, you need to file an application with the USPTO the same way you would do with a mark that's never been registered before. The USPTO will check the application and approve it or deny it.
Registering a dead trademark might seem a good option but as you've seen there are many disadvantages that come with it. This is a difficult matter to navigate. If you need a consultation about registering a dead 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.