Are you looking to claim an abandoned trademark? This comprehensive guide will walk you through the process step by step, ensuring your success. If you’re interested in claiming an abandoned trademark, it’s essential to understand the process involved.
What is an “Abandoned” Trademark?
Before diving into the process of claiming an abandoned trademark, it’s crucial to have a solid understanding of what precisely an abandoned trademark is. Trademark abandonment refers to a trademark that was once applied for or registered at the United States Patent and Trademark Office (USPTO) but has since been abandoned by the previous owner. This can occur for various reasons, such as the trademark owner failing to file the necessary trademark maintenance documents, an unanswered likelihood of confusion refusal, or a settlement agreement as part of a claim of trademark infringement, opposition, or cancellation proceedings.
The original owner receives a notice of abandonment, deeming its mark to be a dead trademark. By familiarizing yourself with the basics of abandoned trademarks, you’ll be better equipped to successfully navigate the process of claiming one.
Identifying an Abandoned Trademark
Before you can successfully claim an abandoned trademark, it’s crucial to conduct a thorough search to ensure that the trademark is truly abandoned and available for you to claim. Start by examining the USPTO Database of Active Trademarks on Trademark Electronic Search System (TESS) to see if the trademark is still active or is a dead mark. Additionally, you should also search other sources, such as state trademark databases, business directories, and online marketplaces, to check if anyone else is currently using the trademark.
This comprehensive search will help you determine if the abandoned trademark is available for you to claim and avoid any potential legal issues in the future. An Intellectual Property Attorney with knowledge of US Trademark Law can help your search process. A skilled Trademark Attorney can ensure the preexisting trademarks and their owner don’t have excusable nonuse of the mark or any remaining common law or exclusive rights.
Ensure Availability | Research Common Law Rights and Prior Ownership
Once you have conducted a thorough search and determined that the abandoned trademark is available for you to claim, the next step is to assess its viability. This involves considering factors such as the relevance and marketability of the trademark, as well as its potential for success in your industry. You should also evaluate the potential risks and challenges associated with claiming the abandoned trademark, such as potential conflicts with existing brands or legal issues.
Countless trademarks are dead; therefore, it’s important not to repeat the same mistakes as the original mark holder. By carefully assessing the viability of the abandoned trademark, you can make an informed decision about whether or not to proceed with the claiming process.
File a Trademark Application at the USPTO.
After assessing the viability of the abandoned trademark, the next step is to file a trademark application. The application must be filed at the United States Patent and Trademark Office (USPTO) to receive a federal registration in the US. The federal trademark registration application process is the first step in active trademark protection in the US. The application should include all necessary information and documentation, the applied-for mark, the appropriate filing fee, and a description of the goods or services associated with the mark.
If filing a trademark application under a 1a (in-use) basis, supporting evidence to show the use of the mark in commerce will be required when filing. The evidence is known as a specimen. The other most common type of filing basis is the 1(b) (intent-to-use) application. To learn more about the different filing basis, click here.
Following the USPTO’s guidelines and requirements when filing the application is essential to ensure its success. Once the application is submitted, the USPTO will review it, which may include examining the mark for any potential conflicts or issues. If the application is approved, you will be granted ownership of the abandoned trademark, allowing you to use and protect it in your industry.
Understand the Registration Process and Office Action Refusal Notices
After filing your trademark application, monitoring its progress and responding to any office actions from the USPTO is important. Office actions are notifications from the USPTO that may require additional information or clarification regarding your application. It is crucial to respond to these office actions within the specified timeframe to ensure the success of your trademark claim.
Failure to respond or provide the requested information may result in the rejection of your application and its eventual abandonment. Monitoring the progress of your application and promptly addressing any office actions will help expedite the process and increase your chances of successfully claiming the abandoned trademark.
Using Your Registered Trademark
Successfully registering a trademark is a significant milestone for any business, but it’s not the final step in the journey. Having your shiny new trademark in hand is just the beginning. It’s crucial to understand that owning a registered trademark comes with responsibilities, primarily its proper use and diligent enforcement.
Importance of Using Your Trademark
A trademark is only as strong as its use in the marketplace. If you don’t use your trademark consistently or stop using it altogether, it could be deemed ‘abandoned’ or ‘dead,’ and you risk losing the rights you worked so hard to acquire. Remember, a trademark is not just a symbolic stamp; it’s a tool for branding that signals your products or services to consumers. Consistent and prominent use of your trademark in your business—on your products, packaging, advertising, or digital platforms—reinforces your brand identity, strengthens your trademark’s recognizability, and enhances its protective power.
Importance of Enforcement: Monitoring and Policing
Just as important as using your trademark is enforcing it. Owning a trademark isn’t a passive venture; it requires proactive monitoring and policing. With the assistance of a trademark lawyer, you can look for potential infringements, such as unauthorized use by third parties or trademarks that are confusingly similar to yours.
Why is enforcement so crucial? Because if you don’t enforce your trademark rights, you risk your mark becoming weak or even generic, meaning it could lose its trademark protection. Consider the fate of brands like “Aspirin” or “Escalator,” once protected trademarks that became generic terms due to lack of proper enforcement.
Enforcement is more than a protective measure. It’s a message to the marketplace that your trademark is active, robust, and defended. It deters potential infringers and maintains the exclusivity and value of your brand.
A critical part of enforcing your trademark involves taking legal action when necessary. If you identify a potential infringement, consult your trademark attorney to determine the best action. It may involve sending a cease-and-desist letter or filing a lawsuit in more severe cases.
A Stitch in Time…
Registering a trademark is a significant investment in your business’s future, so don’t let it go to waste. Keep it active by using it consistently and defend its value by enforcing it diligently. Remember, your registered trademark is more than just a symbol—it’s the essence of your brand, and it deserves to be seen, used, and protected.
So, use your trademark, monitor the marketplace, and don’t hesitate to enforce your rights. Keeping your trademark alive and well can mean the difference between a flourishing brand and a forgotten one. Don’t let your trademark fall into the realm of the abandoned—keep it vibrant and active because your brand deserves no less.
Consider Hiring a Trademark Attorney
While claiming an abandoned trademark may seem straightforward at first glance, it can rapidly become a complex endeavor entwined with several legal intricacies. That’s where the expertise of a trademark attorney becomes invaluable.
Engaging with a seasoned trademark attorney can provide essential guidance and support, optimizing your chances of successfully claiming an abandoned trademark. They have a deep understanding of the legal landscape surrounding trademarks, and they can navigate it to protect your interests.
Firstly, determining if a trademark is genuinely abandoned requires a comprehensive understanding of trademark law. For instance, a trademark could appear inactive, but it might not be legally abandoned if the original owner can demonstrate intent to resume its use. A trademark attorney can conduct thorough research, analyze the status of a trademark, and offer expert advice on whether it can be legally claimed.
Secondly, filing for a trademark can be a labyrinth of navigating the application’s intricacies and strict deadlines. Missing a single step can set you back, leading to delays or even rejections. A trademark attorney can ensure that your application is accurate, complete, and timely filed, making the process significantly less daunting.
Moreover, in the event of a dispute over the trademark, having a trademark attorney by your side is critical. They can represent your interests, articulate your case effectively, and advocate for you throughout the proceedings.
While hiring a trademark attorney does involve an investment, the benefits can far outweigh the cost. They can provide a smooth, efficient pathway to claim an abandoned trademark, potentially saving you time, stress, and the financial implications of a failed application or legal dispute.
So, if you’re considering claiming an abandoned trademark, remember that you don’t have to face the process alone. A trademark attorney can offer invaluable support, expert knowledge, and peace of mind, making them an indispensable ally on your trademark journey.
Remember, claiming an abandoned trademark is not just about filing an application; it’s about safeguarding your brand and business. Ensure you have the right professional support to ensure your venture into the world of trademarks is successful.
So, as you contemplate claiming an abandoned trademark, consider hiring a trademark attorney seriously. They could be your key to unlocking the full potential of a previously abandoned brand, allowing your business to grow and thrive.
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
To know more about Sahil Malhotra — Click Here