Dead Trademark
A dead trademark is an indicator by the U.S. Patent and Trademark office that a trademark application or registration is no longer actively pending. A trademark will be marked dead when a trademark registration is not renewed or when an applicant does not timely respond to an office action or notice of allowance.
When a trademark is marked dead, the applicant loses the protections afforded by federal trademark registration. However, the applicant may still have common law rights.
What is a Dead Trademark?
Dead trademarks are no longer recognized as actively pending by the USPTO. They were at one point either applied for or registered with the federal government, but due to specific circumstances, they’ve lost the benefits that come along with registration. This can occur even when trademark abandonment hasn’t taken place.
There are many issues that arise when a trademark is dead:
- The applicant is no longer able to use the federal trademark symbol.
- The trademark may only have regional protection – if any.
- Competitors can potentially gain rights over the trademark.
- There is less force behind trademark cease and desist letters.
Each year hundreds of thousands of trademarks are abandoned so this is a somewhat common occurrence.
If a Trademark is Dead Can I Use It?
It is possible to claim a trademark once it’s dead. When a trademark is listed as ‘dead,’ it’s previous ‘live’ status won’t bar you from registration. However, you will run into problems of the original owner is still using the trademark or decides to start using it again after a period of time. In these instances the original owner may still have strong rights to the trademark which means that you would be exposed to a claim of trademark infringement if you began subsequent use.
Here are a few considerations prior to using or attempting to register a dead trademark:
Length of Abandonment
Once a trademark is not used for three years, it is considered presumptive abandonment. If it’s still listed as ‘live’ with the USPTO, though, you’ll have to go through the trademark cancellation process to have the rights revoked.
The longer a trademark is abandoned, the more likely you are to face no pushback from the original owner.
Why is the Trademark Dead?
If a dead trademark occurred due to a failure to file a trademark renewal, it’s possible that the original owner is still utilizing the trademark. They may have just accidentally missed the deadline. This can often be verified by searching online to see if the trademark is still in use.
The two other most common ways that a trademark is marked dead is when a response is not timely filed in response to an office action or notice of allowance. Both have 6 month deadlines for a response. Often these deadlines are missed when the applicant has chosen to abandon the trademark.
What if the Trademark is Still Being Used?
If a “dead” trademark is still being utilized in commerce, avoiding usage is advisable. The original owner will still retain common law trademark rights.
Dead Trademark Causes
Your best bet at avoiding a dead trademark – at least during the application process – is to be sure that you don’t miss any emails from the USPTO examining trademark attorney assigned to your application. The most common cause of trademark abandonment is failure to timely respond to a communication from USPTO examiners.
Office Actions
About four months after filing your trademark application, the USPTO will assign it to an examiner. They’ll review your request and – in many instances – will reach out to you for corrections. This is known as an Office Action, and there are a variety of reasons you may receive one:
- Your trademark is too similar to a preexisting trademark: When your registration would create a likelihood of confusion with preexisting trademarks.
- Technical errors: The application didn’t meet requirements or had other technical issues.
- Descriptive factors: Trademark in question is either merely descriptive or deceptively misdescriptive.
- Geographic concerns: Your trademark contains geographical terms that are merely descriptive or deceptively misdescriptive.
- Merely a surname: Surnames cannot be trademarked.
- Ornamentation: You may receive an office action if your trademark serves as merely a decorative feature rather than a brand identifier.
Whenever you receive an Office Action, it’s important to respond to the examining trademark attorney in a timely manner. This means the USPTO must receive your response within six months. There are generally no extensions allowed so it’s important to correct any issues and quickly file your response.
There are two types of Office Actions you may encounter. Non-final actions describe the issue and provide an opportunity to correct it. If you fail to properly address the examiner’s concerns, you’ll receive a final office action. Once a trademark application has received a final office action typically this is little opportunity to save it. To avoid a dead trademark, you must deal with all concerns raised by the USPTO examining trademark attorney.
While failure to respond to Office Actions are one of the most common reasons for dead trademarks, there are numerous other issues that lead to the same result. Once these occur, it can be an uphill battle to reinstate your trademark. Avoid these problems to maintain your trademark:
Trademark Expiration
Trademarks can last indefinitely, but they require occasional maintenance. Between five and six years following registration, you must submit a Declaration of Use. Nine to ten years after registration, you’ll need to file a renewal form and a second usage declaration. This must be done every ten years after.
If you miss this deadline, the USPTO offers a six-month grace period. You’ll encounter additional fees, but it will prevent your trademark from expiring. Failure to renew by the end of the grace period results in trademark abandonment. For more information see our trademark renewal page.
Notice of Allowance
If an Application is filed on an intent to use basis, eventually a notice of allowance will issue giving the applicant 6 months to file a statement of use. If no statement of use is filed, the application will abandon.
Intentional Lapse
Some trademark owners intentionally allow their application to lapse. This constitutes abandonment. Brands may do this if they’ve gone out of business or no longer plan on utilizing a specific trademark. This may also occur if their property was initially on the Supplemental Register but is now listed on the Principal Register. Express abandonment is available for use, but the process is irreversible.
Opposition and Cancellation
The USPTO may also list a trademark as ‘dead’ if a successful trademark opposition or trademark cancellation is filed. Certain outcomes of trademark litigation could also lead to this result.
Common Law Trademark Rights
Even if a brand or product identifier isn’t registered with the government, it still has common law trademark rights. This means that you could still assert rights even on a dead trademark. The only requirement that must be met for common law protection is continued use in commerce. Since there’s no assumption of ownership and usage without federal registration, though, it’s important that you keep appropriate documentation of use.
Even though a dead trademark can retain common law rights, there are several disadvantages to this:
- No national protection: Common law trademark rights only extend to the geographic area where usage occurs.
- No USPTO listing: If you’re trademark is listed as dead, the USPTO will approve a new application for the same exact trademark since they do not consider common law uses.
- Cannot use registration sign: You’ll have to use the unregistered trademark symbol (™) instead of the federal symbol (®).
- Competition: Common law trademark rights will not necessarily stop a competitor from using a similar trademark in a different geographic area.
While continued use will retain common law rights over a dead trademark, you’ll be losing a variety of benefits afforded to federally registered trademarks.
How to Revive an Abandoned Trademark
If you have a dead trademark on your hands, it doesn’t necessarily mean you can’t regain your rights. When it comes to expired trademark registrations, renewing within the six-month grace period is essential.
When a trademark is listed as abandoned during the registration process, it’s possible to file a Petition to Revive. If your Office Action response, Statement of Use or Extension to File a Statement of Use isn’t received in a timely manner, the revival petition is your main recourse. Typically this must be done within 2 months of the abandonment and you must explain why you missed the deadline.
Contact Us
Please feel free to contact us if you have an issue with a dead trademark.
