The U.S. Patent & Trademark Office has its own search system that allows users to see what trademarks are pending/registered. TESS is a great tool for conducting a preliminary (or “knockout”) search. However, if you do not have experience with trademarks, the results can be confusing. One element of that is the distinction between trademarks that are designated “live” or “dead.” This blog post will give you a basic understanding of the live and dead trademarks.
What Is a Dead Trademark?
First, keep in mind that both applications and registrations at the USPTO can be either live or dead. While the designations “live” and “dead” may sound dramatic, their purpose is quite simple. It is probably easier to think of these designations as the difference between “active” and “inactive.” So a live trademark is either an active pending application or a registration. On the other hand, a dead trademark at the USPTO is an inactive application (abandoned) or registration (cancelled).
There are many reasons why an application or registration will go abandoned or cancelled. Applications are frequently abandoned in response to an office action. If the application’s owner does not file a timely response to an office action, or are unable to resolve issues raised in an office action, the application will go abandoned. Registrations, on the other hand, are cancelled when the owner fails to file a renewal. Alternatively, they can be cancelled as part of a cancellation proceeding with the Trademark Trial & Appeal Board. When an application or registration goes abandoned or is cancelled, it is then marked “dead” in the USPTO records.
Can I Use a Trademark Listed as Dead?
When a trademark application or registration at the USPTO is marked as dead, it will not be cited as a basis for rejecting your application. While dead trademarks (especially cancelled registrations) can often indicate that an owner has abandoned rights to their trademark, that is not always the case. Sometimes the owner of a registration simply forgets to file a renewal, but still uses the trademark. Thanks to common law rights, they may retain broad ownership of the trademark based on use. For example, let’s say that Amazon forgot to renewal all of their trademark registrations for AMAZON. Seeing this, you decide to launch your own AMAZON retail store. How do you think that’s likely to work out? Amazon would sue you because they still retain broad rights based on their common law use of the AMAZON trademark. When you see a dead trademark you want to use, there are several things to consider:
How long ago was the application or registration abandoned/cancelled?
If the application/registration was cancelled 20 years ago, it is much less likely that the owner is still around and using the trademark. If this became a dead trademark recently, then it is more likely that the owner is still around and you may want to check on that.
How did the application or registration become abandoned/cancelled?
As discussed above, a trademark can become “dead” for many reasons. That reason might tell you something about your chances to obtain rights to the trademark. For example, if there was an office action refusing registration of a trademark on the basis that the trademark is merely descriptive, then chances are it will be difficult to establish trademark rights in the short term. If there was a registration cancelled by another party claiming priority and likelihood of confusion, that might mean that multiple parties are claiming rights to a similar trademark. That could represent a future dispute that you choose to avoid.
Is the trademark still being used?
This is the most important consideration in most cases. If the owner is still using the dead trademark, they could file again in the future, or at least oppose an application for the same trademark. If you know for a fact that the trademark has not been used for many years, then that is a good indication that the trademark has been abandoned.
Can a Dead Trademark Be Revived?
The rest of this blog post has focused on someone else’s dead trademark. But is there something you can do if your own application or registration goes abandoned or cancelled? That mostly depends on how long your trademark has been dead. If you missed the deadline for filing a renewal, you actually have a six-month grace period in which you can file (with an additional fee). If instead you had an application that was abandoned for failure to respond to an office action, you can petition to revive your application within a certain time frame.
Do You Need Assistance with a Dead Trademark?
Conducting a thorough trademark search of the USPTO records can be difficult. In addition to weird terminology like the live/dead distinction, it can be hard to tell what is and is not a potential conflict with your trademark. I have years of experience helping clients to navigate the records and find potential issues, if there are any. If you would like assistance with your search, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
