It depends on the facts and if the marks are still in use. One common reason for
a trademark to go abandoned and become a DEAD mark is failure to complete the application
process or failure to complete the process correctly. While someone else may apply
for a mark that is DEAD, that does not mean that the mark is safe for anyone because
the mark may still be in use even if not registered. Trademark examiners do not and
cannot take DEAD marks or common law marks into account when searching for Likelihood
of Confusion conflicts with pending or registered mark. The owner of the DEAD or
common law marks would have to pursue stopping the application themselves through
an Opposition proceeding, Cancellation proceeding or in court.
One common reason why a trademark goes DEAD is FAILURE TO TIMELY FILE REQUIRED DOCUMENTS.
The latest status on the USPTO’s TSDR may read: Current Status: Registration cancelled
because registrant did not file an acceptable declaration under Section 8” may mean
that the mark has been abandoned and no longer in use or that the owner is still
using the mark but just did not keep up with filing requirements. Another common
document failure is “Current Status: Abandoned because no Statement of Use or Extension
Request timely filed after Notice of Allowance was issued.” These statuses may mean
that the mark has been abandoned and no longer in use or that the owner is still
using the mark but just did not keep up with filing requirements such as Sec. 8 (declaration
of use) or Sec. 9 (renewal) filings.
Another reason for a DEAD mark is: “Current Status: Abandoned because the applicant
failed to respond or filed a late response to an Office action” may mean that the
mark was merely descriptive, had an inadequate specimen, had a likelihood of confusion
with pending or registered marks or other reasons. The mark may be abandoned by the
owner or the owner did not competently answer the refusal or is no longer using the
What does a status of "dead" or "abandoned" mean?
15 USC §1127: Abandonment of mark. A mark shall be deemed to be “abandoned” if either
of the following occurs: (1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred from circumstances. Nonuse
for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a
mark means the bona fide use of such mark made in the ordinary course of trade, and
not made merely to reserve a right in a mark. (2) When any course of conduct of the
owner, including acts of omission as well as commission, causes the mark to become
the generic name for the goods or services on or in connection with which it is used
or otherwise to lose its significance as a mark. Purchaser motivation shall not be
a test for determining abandonment under this paragraph.
If an application shows a status of dead or abandoned, it means THAT specific application
is no longer under prosecution within the USPTO, and would not be used as a bar against
your filing. However, it does not necessarily mean that there are not OTHER marks
which the examining attorney would cite. Also, there is always the possibility that
an abandoned application COULD be revived (e.g., if the USPTO declared the application
abandoned for failure of the applicant to respond to an Office action, but the applicant
establishes that a response was sent, and the USPTO simply failed to match it with
the file in a timely manner, then the case will be revived). Also, regardless of
the status of an application within the office, the owner may still claim common
law rights. Extracted fromhttp://tess2.uspto.gov/bin/gate.exe?f=help&state=4005:u7fvf.1.1#FAQ_DEAD
Many trademark verification or search services disregard trademarks that are marked
DEAD in search records. Unfortunately, this does not necessarily mean that a trademark
is available for someone else to use. The Lanham Act expressly states that "[n]onuse"
of a mark "for 3 consecutive years shall be prima facie evidence of abandonment."
15 U.S.C. § 1127. Itc Ltd. v. Punchgini, Inc., 482 F.3d 135 (2nd Cir., 2007). A search
or search report that is done mechanically and/or without knowledge of trademark
law, may “verify” or “clear” a trademark for use that is still being used by a prior
user and that prior user may still claim common law rights. A direct hit federal
search or an inexpensive SAME DAY REGISTRATION service would probably not reveal
§ 2.68 Express abandonment (withdrawal) of application [37 C.F.R. Part 2-Rules of
Practice in Trademark Cases]
An application may be expressly abandoned by filing in the Patent and Trademark Office
a written statement of abandonment or withdrawal of the application signed by the
applicant, or the attorney or other person representing the applicant. Except as
provided in § 2.135, the fact that an application has been expressly abandoned shall
not, in any proceeding in the Patent and Trademark Office, affect any rights that
the applicant may have in the mark which is the subject of the abandoned application.
Many trademark searches or trademark verifications may show that a mark is DEAD but
not show that the mark was EXPRESSLY ABANDONED. In a case of express abandonment,
a prior user of the mark may have sent a “cease and desist” letter to the new applicant
or registrant letting them know that they would be sued or opposed if they continued
the registration process any further and that continued use of the mark was intentional
infringement. In this case, a DEAD mark that is an EXPRESSLY ABANDONED DEAD mark
is a red flag that a potentially big problem exists with registering this mark rather
than showing it is available. A quick, do-it-yourself search may not reveal this
information or worse may indicate that the mark is clear. Getting a cease and desist
letter early in the process may be getting off easy compared to being sued or trying
to defend against an opposition or cancellation after substantial funds have been
ABANDONMENT-FAILURE TO RESPOND
§ 2.65 Abandonment. [37 C.F.R. Part 2-Rules of Practice in Trademark Cases]
(a) If an applicant fails to respond, or to respond completely, within six months
after the date an action is issued, the application shall be deemed abandoned unless
the refusal or requirement is expressly limited to only certain goods and/or services.
If the refusal or requirement is expressly limited to only certain goods and/or services,
the application will be abandoned only as to those particular goods and/or services.
A timely petition to the Director pursuant to §§ 2.63(b) and 2.146 or notice of appeal
to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a
response that avoids abandonment of an application. (b) When action by the applicant
filed within the six-month response period is a bona fide attempt to advance the
examination of the application and is substantially a complete response to the examiner’s
action, but consideration of some matter or compliance with some requirement has
been inadvertently omitted, opportunity to explain and supply the omission may be
given before the question of abandonment is considered. (c) If an applicant in an
application under section 1(b) of the Act fails to timely file a statement of use
under § 2.88, the application shall be deemed to be abandoned.
Failure to respond is the leading cause of trademark application abandonments. Only
30% of TEAS Plus applications proceed to publishing for opposition without an office
action refusal (the percentage is worse for TEAS). Overcoming a refusal without knowledge
and experience in trademark law is difficult and many refusals can’t be overcome
even with knowledge and experience because the applications were for trademarks that
have serious Likelihood of Confusion issues with registered or pending trademarks.
Sometimes, the likelihood of confusion is with a junior user, someone who started
using the mark later but got their application in sooner. In cases like this, a cancellation
proceeding may be the answer for the senior, prior user who was late in getting their
application into the USPTO.
Many trademark problems, refusals & delays can be avoided or overcome by using Not
Just Patents® Trademark Services. We do not just fill out an application and submit
it, we work to protect your protectable legal rights and to keep costs as low as
possible to get you less refusals and delays. We have many, many examples of common
refusals that could have been avoided both by pro se applicants (no lawyer or a filing
service that does not record their name on record because they are not attorneys)
and applicants represented by attorneys. Call us at (651) 500-7590 and get a quote
and ask for an example.
→Not Just Patents ® Legal Services provide a broad range of services for Intellectual
Property Protection. If you are unsure what type of product or service protection
is best for your business or just have a question, please call–a brief initial consultation
is free at 1-651-500-7590. See Why Should I Have A Trademark Attorney Answer My
Office Action if you have already applied and been refused.
Call: 1-651-500-7590 or email: firstname.lastname@example.org. This site is for informational
purposes only and is provided without warranties, express or implied, regarding the
information's accuracy, timeliness, or completeness and does not constitute legal
advice. No attorney/client relationship exists without a written contract between
Not Just Patents LLC and its client. Past performance is no guarantee of future results.
Call 1-651-500-7590 or email email@example.com or ContactTrademark.com for
Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent
or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.
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