When searching the trademark register of the US Patent and Trademark Office (USPTO) before filing a trademark application, you will see many abandoned trademark registrations. These are trademark registrations that have been canceled for one reason or another or applications which never registered to begin with.
The USPTO only examines live applications or registrations when reviewing a new application for possible conflicts. Thus, the question arises: if a trademark is Abandoned on the USPTO’s register, can you use it yourself? Is it really available for your use?
The short answer: not without more research.
What Does “Abandoned Trademark Registration” Really Mean?
When the USPTO database lists a trademark as “abandoned” or “dead,” it only means the registration is no longer active.
This does not necessarily mean that the trademark itself has vanished from the marketplace. To the contrary, there are many reasons why trademark owners fail to renew or to maintain their registration. Only one of those reasons is that the owner is no longer in business.
A business may still be using that same name, slogan, or logo every day.
The key question is not whether the mark is registered, therefore. Rather, the key question is whether someone is still using it in commerce.
First to Use vs. First to File in the United States
Whether or not the mark is still “in use” is the key question because, in the United States, the first person to use a trademark in commerce has the right to register it with the USPTO. The US does not follow a “first-to-file” system.
Here is what that means:
- Rights go to the first person or company using the mark in interstate commerce.
- Interstate commerce means use across state lines when selling goods or services.
- A trademark application alone does not create enforceable rights.
Trademark law protects consumers by preventing confusion about the source of products. It does not exist to reward whoever files paperwork first.
Conversely, because the USPTO trademark registration has been Abandoned, this does not mean that the mark is no longer in use by its “first owner.”
Example:
Suppose you file a trademark for “Zoca Zola” soda in 2019. Another company has sold “Zoca Zola” soda nationwide since 1910 without filing. That older company owns the rights, not you.
Even if your application is accepted, the senior user could file a protest or opposition, or after registration, a cancellation proceeding to forcibly Abandon what was always a “weak” registration.
Why Do Trademark Registrations Become Abandoned?
There are many reasons an abandoned trademark registration appears in the USPTO register:
- The owner missed renewal or maintenance deadlines.
- The required Statement of Use was never filed.
- A company changed hands and filings fell through the cracks.
- The owner chose not to pay the filing fees.
- A USPTO examiner issued an Office Action and the applicant did not respond.
- The trademark attorney representing the owner failed to act.
What is missing from this list: stopping business activity? A registration can lapse even while the mark is still actively used in commerce. The USPTO will only Abandon the registration if the renewal deadlines and subsequent grace period elapses.
Common Law Trademark Rights Still Apply
Even if a registration is abandoned, the owner may continue using the mark. In that case, the owner holds common law trademark rights.
These rights:
- Arise automatically from use in commerce.
- Exist even without USPTO registration.
- Can block later users from registering or using the same mark.
Common law use of a trademark off of the USPTO register is a primary reason why a pre-registration trademark clearance search is so vital to the long-term success not only of your registration but your brand.
The Real Risk of Using an Abandoned Mark
Finding an abandoned trademark registration does not mean you are safe to use it, long story short. Using an Abandoned trademark without first determining that the original registrant is no longer in business can expose you to trademark infringement and other claims for damages.
Certainly, there will be steps that the original registrant would need to take to cancel your registration of the trademark, if you’ve managed that, but a brand in active use is a brand with continuing value. That means it is worth spending money on attorney’s fees to take such action, for that original owner.
The Bottom Line on Abandoned Trademark Registrations
An abandoned trademark registration is not a free opportunity for use. If you are considering launching a business premised upon use of an abandoned trademark registration, it is essential that you retain an experienced trademark attorney to assist you before you invest in websites, product, inventory, signage, or any related start-up expense.
It is always cheaper to re-brand up front, before you have invested in such costs.
Protect Your Brand With Expert Help
At Noble Path Legal PLLC, we assist businesses in every industry with:
- Comprehensive trademark clearance searches
- Federal trademark registration applications
- Renewal and monitoring services
- Office Action refusal responses
We provide virtual consultations and serve clients nationwide from our Metro Detroit office.
Click below to schedule your consultation and begin protecting your brand today.