A dead trademark is one that was registered or applied for and is “dead” or abandoned, for several reasons.  Whether anyone else can use it, or whether the original registrant can revive it, depends on the details.

What is a trademark?

A trademark is something that identifies the source of goods and distinguishes goods sold by a person or entity from the goods of others.  A trademark can be almost anything: a word, phrase, symbol, image, shape, color, scent, sound, or a combination.  A servicemark is the same thing as a trademark, but it applies to a service or services.  The goal of the laws on trademarks is to prevent consumer confusion, and every discussion of your trademarks and potential marks should focus on whether consumers will be confused by your use of  a mark.

Do I have to register a trademark to use it?

No.  You build trademark rights in the U.S. by using your mark or marks in commerce.  Use the mark with your goods or services, to identify you or your company as the source and to distinguish your goods or services from any competition’s, and you’ll build trademark rights.

So why register a mark?

Registering a mark with the USPTO has many benefits.  Among other things, registering a mark:

• notifies everyone else that you are using it;
• protects against registrations of confusingly similar marks;
• leads to treating the mark as if used nationwide as of the application date;
• gives the registrant the ability to sue in federal court; and
• can discourage other people and companies from using confusingly similar marks.

What is a dead trademark?

Trademark registration applications can be abandoned for failing to respond to a USPTO Office Action, for an incomplete response, or for failure to file a statement of use.  Once a trademark is registered, the registrant must maintain it by filing a declaration of continued use to keep the registration alive.  A dead trademark registration is one whose registration was abandoned before it was issued, or for which no declaration of continued use was filed.

Can I register a dead trademark myself, or use it without registering it?

When the USPTO shows a trademark registration as dead, it may be because the application was abandoned, or because the registrant did not maintain the registration.  In either event, it is possible that another person or company, and/or the applicant or registrant, is using the mark and continuing to accrue common-law trademark rights.

A dead registration may be a live trademark

Just because a mark is listed as “dead” at the USPTO, does not mean it is available to use without registration, or to register.  It’s possible that the registrant of the trademark abandoned the federal trademark registration, but is still using the mark – and so still has common law trademark rights.  Also, some trademarks have acquired so much goodwill and recognition from consumers that resurrecting them (by anyone other than the original registrant) can be difficult and expensive.

How should I go about using or trying to use a previously registered mark?

Before you proceed with using it, you should contact a trademark and branding attorney to clear the rights to the mark, to dig into why the application was abandoned.  You may be able to use someone else’s previously registered mark, but it may difficult and costly: the chances of opposition and even infringement litigation from the former registrant are a real — and expensive — concern, and the state of the law is uncertain.  You should also discuss searching common-law uses of the mark, State corporate names and State trademark registrations, and domain names, which collectively is known as clear.  If you proceed with using a mark without clearing the rights to it first, you are taking a large risk with the valuable intellectual property and goodwill of your company, as well as your time and money.

What if I was the registrant, and want to use a dead trademark again?

Depending on when and why the registration was abandoned, you may be able to petition to revive it, or begin using it again.  Check this space soon for information about reviving your own abandoned registration.

Have questions?

If you have questions about using a mark or a potential mark, whether it is marked as dead or you can’t find a record of it, or you haven’t searched at all, contact me.  You can reach me via email, or by phone at 617-340-9295, to discuss your goals and questions.