Life After Death of a Trademark…How a Dead Mark Can Impact your Trademark Application

In the spirit of October, and everything “Spooktacular,” the topic of dead trademarks seems appropriate for the season upon us…

Finding the perfect wording, slogan, logo, or other brand for your business can be a long and complicated process.  When you finally decide and file your trademark application with the United States Patent and Trademark Office (USPTO), you may find yourself in a difficult position if your mark is identical (or nearly identical) to a dead or abandoned mark.

The USPTO defines a dead mark as “a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing.”

According to the definition of a “dead mark,” it is possible to register a dead mark.  However, there are other considerations to weigh when considering that life after the death of a trademark may still exist and come back to haunt your application if you are interested in trying register a dead mark and make it your own.  

First, Applicant’s need to be wary of the “ghost mark.” A ghost mark is considered to be dead by the USPTO because the registration lapsed, or the application was abandoned, but it is still active in U.S. commerce.  Finding out whether or not a ghost mark is still in use involves some investigation of a prior registrant’s business and presence in commerce.  While a registration may lapse and kill the registration rights of the mark, the owner may still have common law rights to assert.  If an Applicant is applying for a dead mark, they still may be subject to trademark infringement.

In your search for finding that perfect mark for your business, you may uncover that a famous company’s brand registration has lapsed, and their mark no longer appears to be in use, or has been abandoned.  This may look like an opportunity for an applicant to bring back to life the company’s brand “under new ownership” and enjoy all of the goodwill associated with the famous mark. Under U.S. trademark law, it is well known that a trademark can be abandoned by its owner when they cease to use the mark to identify their goods and/or services and there is no intent to resume use in the future.  Three consecutive years of non-use creates a rebuttable presumption of abandonment.  A “zombie mark” arises when a new owner revives a notorious dead mark, a mark typically associated with widespread consumer recognition and goodwill.   Problems arise for the Applicant if there has not been a true abandonment of the mark by the prior owner, however.  For instance, some once famous marks retain what is known as “residual goodwill” which could prevent a third party from profiting from that goodwill. This is an emerging and evolving area of trademark law, and one should be wary of the zombie trademark, not considered to be dead or alive.

If you happen to be the owner of a mark that rests in the graveyard of dead marks at the USPTO, it is possible to revive your mark from the dead if your registration lapsed accidentally but you continued to use the mark.  It is important to monitor your trademark and if you failed to follow the maintenance rules set forth by the USPTO, your trademark can die.  The revival of your mark will entitle it to all the protections once afforded to it while registered in the USPTO provided no third party intervened to acquire those rights.

If you have any issues regarding a dead mark, talk to a Dunlap, Bennett and Ludwig trademark attorney today.  If you recently registered and want to avoid the death of your mark, DBL offers full services for all trademark matters including watching trademark publications for potential infringers, maintenance, and trademark enforcement services.

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Posted in: Intellectual Property - Trademarks