All Questions in Trademark Ownership >> expired registration rights

expired registration rights

Posted by . updated on 11/11/2009
I have, for the some years, under contract, been licensed by a corporation, and pay a royalty to them, for use of some their  older trademarks on collector type items. I have now found that, even before they began licensing  their  use, that one trademark they had allowed the Federal trademark registration to expire under Section 9 of  15 USC. Another trademark registration expired under Section 9 during the time they were collecting royalties under contract. My question is, do they contine to have rights to these trademarks, possibly under common law, and are they legally within their rights to collect a royalty? They do not currently use these trademarks on any of the goods and services for which they were licensed. Is there any case law that may pertain to this issue.
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Answers (6)
 
M. Arthur Auslander
You need a legal factual study including contact law. My gut reaction is that the trademarks may have been abandoned but there may still be common law rights.
 
 
Willy
What differentiates a trademark with expired registration from an abandoned trademark? I haven't been able to find anything that explains if, when the registration expires, it becomes abandoned?
Thanks,
Willy
 
 
Isaac
Trademarks exist with or without registration.    Trademarks are created by the use of a mark to identify goods and services in commerce and NOT by registration.   (Although registration does provide some important rights and benefits)  Registration on the principal register requires that the mark be in use in commerce as a trademark.

Registration has to be periodically renewed.  When you renew you have to certify that the mark is still in use.  

If the registration expires but the mark is still in use then the mark does not expire.   In that case only the registration will be abandoned.

If the mark is not in use when the registration expires, the registration is abandoned, and the mark itself may or may not be abandoned depending on a number of factors.  

 
 
M. Arthur Auslander
Clark,

For the record, you last post was terrific.
 
 
M. Gainey
If a trademark is dead/ expired, how can I purchase it? Thanks.
 
 
JSonnabend
Quote
If a trademark is dead/ expired, how can I purchase it? Thanks.

You can't purchase it.  You might be able to use it, and perhaps register it, but there's no one from whom to buy it.

- Jeff
 

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