In this video, you get answers to these questions:

  • Can I register a “dead” or abandoned trademark?
  • What is a dead or abandoned trademark?
  • What is trademark protection?
  • What can lead to trademark infringement?

Video Transcript

Can I register a dead or abandoned trademark? That’s a question I’m going to answer today. I’m Aaron Hall. I’m an attorney who works regularly with trademarks and before the US Patent and Trademark office. I work with business owners in Minnesota and deal with this type of issue all the time.

So, let’s talk about this first. What is a dead or abandoned trademark? Basically, it is a designation on the federal trademark registry that says, look, this particular mark is no longer registered, or the application was abandoned and so the owner who is seeking federal trademark registration has essentially let it go, in that process. What it doesn’t mean is that the owner is no longer using it. In fact, often businesses are still using their trademark or a version of it, but they abandoned the federal registration for one reason or another. I’ll give you an example.

I have a client who just last week decided, “We’re not going to renew our federal trademark registration because we’ve made a slight modification to the logo. We’re no longer using the logo that was trademarked, so we can’t renew that one.” That is going to essentially be dead. But this client of mine may register a new mark or they might decide, “You know what? We’re not going to do a federal registration. What we are going to do is continue to use it across the globe.” This is an international organization. And they may just rely on common law trademark rights.

Now you’re probably thinking, “Whoa, what is this?” This is the big surprise that catches people who think they can just go register a dead or abandoned trademark because they think it’s no longer in use. There’s federal trademark registration, which according to federal law gives you significant trademark protection, but there’s another type of trademark protection, and that is called common law trademark rights. By using a mark in commerce associated with your goods or services, you are acquiring common law trademark rights in the county where you’re doing business. Now, I say county because that common law trademark is addressed typically county by county, not state by state, not city by city, not any other geographic category, it’s county by county. So by doing business in a county under a certain name, as long as you’re the first one to use that name and it’s a unique name, it’s not some generic term or descriptive term, it’s something unique. I’ll give you an example.

Kleenex is unique, it’s a type of tissue. Xerox is unique, that is a made-up word for copying, copying machines and copy paper. Those are examples of protectable or trademarkable names. Without getting too much into the details here, the bottom line is if you’re using a unique word, and you’re the first one in your county, you’re acquiring common law trademark rights.

Now, when you do a federal trademark registration you get nationwide protection, so it’s much bigger and better. It’s not that expensive. But the bottom line is, if you go to register an abandoned or dead trademark and you don’t pay attention to whether a company is already using that mark somewhere, then you may run into trademark infringement because the company already using it has common law trademark rights.

So, I just ran into a client the other day who wanted to do this and I said, “Let’s start by googling it. Let’s see if any other company out there is using this.” These days, with the internet, it’s amazing what we can do compared to 20 years ago when we had to pay for some research database to do an initial scan. These days you hop on Google and you see if it’s being used. That’s a quick way to quickly see if an exact word or mark is in use.

Just put it in quotes, search it on Google, see what you find. If it is in use, it doesn’t mean you can’t use it, but it might, and that’s where there’s something to talk about with a trademark attorney. You might, for example, be able to use it in every other part of the country, but not in that geographical location where it’s currently being used.

So, at a high level, can you do a trademark registration for an abandoned or dead mark? Maybe, but it depends on whether somebody has common law trademark rights. In other words, is somebody else already using the trademark in commerce in a county where you want to be using it?

All right. If you want to learn more about this and similar topics, you can see the links in the description below. You can subscribe to this channel. And I encourage you to check out the disclaimer. The bottom line is this is a general educational video. It’s not a substitute for talking with an attorney about the specific issues that are important to you. In fact, I do this so you can spot those issues and identify what you want to discuss with your attorney, and that attorney can apply the law in your jurisdiction. I’m Aaron Hall. Thanks for joining me today.