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Federal Trademark Registration: Abandoned Trademark Registration and Use In Commerce
An initial trademark clearance or knockout search, conducted prior to the filing of a Federal trademark registration application, will reveal any number of “abandoned” or “dead” trademark registrations in the USPTO TESS database.
What if one of these abandoned or dead trademark registrations mirrors the one that you hope to use to represent your product or service to consumers?
Is it freely available because it is a “dead mark” in the Federal database?
It is the case that, if a business name, advertising phrase or slogan, or logo is listed as “dead” or “abandoned” in the USPTO TESS database, it is not currently registered for use.
That does not mean it is not IN use.
Whether a trademark is in use or is not in use is the more relevant question.
Federal Trademark Registration: Protection for Marks Used in Commerce
It is important to keep in mind that the United States is not a “first to file” jurisdiction with regard to trademark registration. The US is, instead, a “first to use” jurisdiction.
That means that eligibility for Federal trademark protection belongs to the one who was first to use the name, phrase, or logo in interstate commerce (across state lines) to market a product or services to consumers.
This is important because, unlike copyright or patent law, trademark law exists to protect someone else. Copyright registration protects the author (or assignee) or a work. Patent protection protects the creator or inventor (or assignee) or a system or process.
Trademark registration does not protect the “creative rights” of the person or company who created the word, phrase, or logo. It protects consumers and their right to know what they are buying and from whom.
Thus, if are the first to file a Federal trademark registration application for use of the “Zoca Zola” in relation to the sale of a carbonated soft drink that you just started selling out of your garage in 2019, and another company based, say, in Atlanta, has been selling such a drink across the United States and elsewhere since 1910 without ever filing a trademark application, that company in Atlanta has the right to use the name “Zoca Zola.”
Your application will be refused by the USPTO. Even if, by some miracle it isn’t, the Zoca Zola Corporation of Atlanta will very likely file a Letter of Protest during your trademark registration application process or, worse for you in terms of attorney’s fees, file an Opposition to your application after it passes by the USPTO examiner.
There is a “common law” right to use a trademark that exists outside of the Federal trademark registration system. It is a function of case-law rather than statute and provides significant rights to the first-to-use owner of a mark.
Federal Trademark Registration: Is Someone Using the Mark Off-Line?
All of that being the case, the question when confronted with a “dead” or “abandoned” registration is whether someone else, regardless of their registration status with the USPTO, is using the mark in Michigan, Illinois, Florida, New York, Montana … or wherever.
And whether they have been using it longer.
There are many reasons why a Federal trademark registration might be “Dead.”
The owner may have neglected to contact their trademark attorney to file the required Statement of Use and other maintenance documents. The ownership of the company using the mark may have changed hands.
The owner may have simply decided that he or she or it did not want to pay the $150 Statement of Use filing fee to “renew” the registration.
The owner’s trademark attorney may have died and thus failed to send a reminder to the owner to renew every 5 years.
You never know. And all of these things may have transpired without the owner ever having ceased to conduct business using the name, phrase, or logo in commerce.
Likewise, a mark may have been abandoned for reasons as simple as that the USPTO examiner filed an Office Action refusal during the registration application process and the owner-applicant didn’t feel like paying an hourly rate to his or her trademark lawyer to fight the good fight.
Again, all without ceasing to conduct business in interstate commerce.
Abandoned and Dead Trademark Registrations: The Bottom Line
The bottom line is that with regard to trademark protection of your board game name or logo, it doesn’t pay to go cheap after investing all of your resources and time into the development of your brand.
The Hilla Law Firm, PLLC specializes in trademark matters and will maximize your odds of successful registration with a proper pre-filing clearance search that will uncover ongoing business use of apparently Dead marks.
Our trademark practice is national, representing clients for trademark matters anywhere in the United States and beyond.
The Hilla Law Firm offers affordable flat fees and virtual consultations.
Contact Us at (734) 743-1489 to schedule an initial consultation appointment to discuss your trademark needs.