All Questions in Expired Trademarks >> Dead marks - Abandoned vs. Cancelled and a few other issues

Dead marks - Abandoned vs. Cancelled and a few other issues

Posted by . updated on 11/11/2009
I have a small screen-printing business that specializes in creating and reproducing old and
nostalgic designs from various sports.  One of these is skateboarding and I have some designs based
on long gone and demolished skateparks.   

I have searched the TESS site and found the trademarks are dead.  Some are cancelled and some are
abandoned.  All the parks were built in the around 1978 and closed in 1981, and bulldozed around
1982.  Trademarks were activated in 1978 and were declared dead in 1981 to 1985 so all have not
been used in 21-25 years.  All searched indicate to me that there has been no commerce connected to
these marks.

1) What is the difference between the cancelled and abandoned mark? 
2) Is 20 years or more a long time to remain dead? 
3) What happens to a mark in this situation?
4) Can these be used? (With the understanding that someone may register them)

On another note, I have a design on ebay and received this:

Dear ebay user,

I'm looking for you who is selling these T- Shirts. Please cease and desist. They are counterfeit a
fraud and infringement of our trademark.

-Ebay user

Prior to using the mark I did a TESS search among other things. Nothing on the mark turned up. No
name to contact no nothing.   This image has been on various tribute and skating sites on the
Internet with no documentation.  I have printed this particular design around a year.  Same idea as
above.  A park that went out of business and has nothing attached to it for the last 20 plus
years.  This person?s company contacted me about a month ago to print a run of these shirts for
them. And yesterday the ebay message turned up.  This person has a similar ebay store to me
and also a brick and mortar store. 

I responded by saying something like this: We do a reasonable and as thorough a job searching as
well as we can for valid trademarks or documentation before printing anything.  Just who are you? 
Can you tell me who has the rights to this mark, where it is registered and where its jurisdiction
is valid?  I your information is accurate we will gladly and promptly remove them.

I will lie low and see what the response is.  I have a hunch this guy is fishing, but I will most
likely remove the items shortly voluntarily anyway.  This is basically a hobby and not a livelihood and not
worth any undue risk.

Thanks all.


Answers (2)
 
bcapehart
Slim -

When referring to a cancelled or abandoned mark at the PTO, what is actually being stated is that the registrations for those marks are cancelled or abandoned.  The mark may still be in use by the owner and that owner may still have common law rights.

Regarding cancel v. abandonment, the end result is the same - the registration is no longer is active.  The difference is typically due to the why the registration is no longer active.  Cancellation is usually due to a challenge by a third party whereas abandonment is usually due to some action/inaction on the part of the registrant, such as failure to file a Section 8 affidavit.  But, since we are talking about the PTO, there can be some bleed over between these two, such as a record indicating a mark has been canceled due to failure to file a Section 8 affidavit.

If you find a mark has been previously registered but has been abandoned/cancelled, look for why (failure to renew, cancel following TTAB action, etc.).  You may be able to use the mark, but you may also find the previous registrant may still be using the mark, and in such a case, you may have to address what rights does that person still hold. 

It sounds like you attempting to conduce due diligence on your use.  Keep it up.

As for the eBay situation, your response seems to ask good questions.  If you have any questions after you get a response, please post them.

I hope this helps.
Brent
 
 
nekogomi
I would add one additional statement regarding eBay to the above analysis.  eBay has what is called the Verified Rights Owner (VeRO) Program.  Essentially, this program is supposed to be a way for eBay to police intellectual property rights, and to act when someone claims infringement.

My experience with the VeRO Program, is that eBay does not take any time to investigate the merits of a claim of infringement when faced with a formal complaint from another eBay user.  eBay tends to be really fast to take the word of a complainant, and cancel listings - even when there is not grounds to do so.

So... my two cents is to simply be aware that if the other eBay user were to push the issue by filing a formal complaint through the VeRO Program, it would probably be a short matter of time before your listings related to the mark in question are canceled. 

I think the "laying low" strategy (related to eBay) sounds like a good one.  Just be aware that with eBay, you may be on very thin ice regarding intellectual property rights if the other party were to make a stink about things.  This is true EVEN if you have the right to use the mark in question, and EVEN if you have documentation to back up such rights.  As was pointed out again and again in a previous thread, eBay doesn't seem to concerned that their VeRO Program - in it's attempt to protect legitimate rights-holders - may be hurting other rights-holders who are unfairly accused of infringement.
 

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