Understanding Dead Trademarks — Answering The Important Questions

Dead trademarks are an opportunity for new business owners and a significant headache for trademark applicants. But what are they, and how does a trademark “die?”

In this article, I'll explore this question, starting with the fundamentals: what is a trademark?

What is a trademark?

Think of a trademark as a unique identity — it's something that distinguishes your brand from others.

Customers use it to identify your business. It acts as security, ensuring them that they're going to receive the same quality as their previous purchase.

Competitors who use your trademark, if it's registered (or if you can prove use in commerce), will be liable for trademark infringements.

This means that you can send them a cease and desist letter. You may even be able to sue them for damages.

That's why it's so essential to maintain your trademark registration, but what happens if you don't?

In this case, you may end up with a dead trademark.

What is a dead trademark?

Dead trademarks were either:

(a) Part of a failed Patent and Trademark Office (USPTO) application (commonly due to abandonment of the registration process or a similarly registered trademark).

(b) Lost because the trademark owner fails to renew the trademark.

(c) Canceled due to fraud.

A dead or otherwise abandoned trademark is neither protected by the federal courts nor the USPTO.

And because so many trademarks are abandoned in this way, it may be an opportunity for interested parties to stake their claim.

Can you use a dead trademark for your own business?

As I've alluded to earlier, yes, you can absolutely use a dead trademark for your own business.

That said, you could put yourself at risk of an infringement claim, so make entirely sure that the trademark is definitely canceled or abandoned.

Check out our free trademark search engine to assess this. 

What should you consider before re-registering a dead trademark?

Now, hold on:

Although a trademark may be available, this doesn't mean it's always a good idea to “bring it back to life.”

Ensure you consider the following before committing:

1. Does the original owner intend to use it again?

Or is the original owner still using it in commerce?

But even if they're not using it in commerce, you have to be able to prove in court that the original owner has no intention to use the trademark again.

And remember, the original trademark owner could also fight back.

2. What happened to the trademark?

In other words, how did it die?

If the trademark died because the filing is complete, but you're trying to claim a derivative of an abandoned Facebook trademark, you'll likely not succeed. 

Keep that in mind — if the trademark is still part of a brand and can cause likelihood of confusion:

You may not be able to register it yourself. 

How long does it take for a "live" trademark to become "dead"?

Remember: a trademark is only considered "live" so long as it's actively used in commerce and its registration is maintained.

A trademark becomes dead post registration if:

• The trademark is not used in commerce for a continuous period of 3 years (as per US trademark law).
• The trademark registration expires. In the US trademarks will need to be renewed between the 5th and 6th year post-registration, and subsequently every ten years.

Can you revive a dead trademark?

There's good news for business owners:

Even if you've missed your window to respond to the Trademark Office, as a trademark owner, you can still secure your trademark rights.

You'll still have two more months to file something called a "trademark revival" for your dead mark.

This is the easiest way to bring back a trademark application. 

Basically, you're saying that although you abandoned your trademark, it was not on purpose.

Interested in reviving your dead trademark before it's too late? Our qualified trademark attorneys have got you covered.