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like the good diligent responsible all up in your business watching entrepreneur that you are you're searching the uspto trademark database before deciding on a trademark for your business inevitably you find yourself staring at something like this what does that mean i'm about to tell you what it means why it's so important that you not disregard those dead trademarks and the exact steps to take when you see a dead trademark welcome to all up in your business if you're not subscribed yet hit that subscribe button and the bell so you'll be notified any time i post a new video so you don't miss out on any more hot trademark tips hi i'm aiden durham business and branding attorney with 180 locko in colorado and i have helped hundreds of businesses secure and protect their trademarks whether i'm preparing a trademark application for a client or breaking it down for my diy course brandish the trademark application process starts well before you hit that submit button on the trademark application it starts with a thorough clearance search i've done hundreds of trademark clearance searches and trust me it is the most important part of the entire process one part of the clearance search is searching the uspto's tess database where all the track records are housed and when you're doing it it's pretty likely that you'll run into at least one record of a trademark that says dead if you're not seeing any dead records when you're doing a trademark clearance search you may not be searching enough to so if that's you check out brandish where i show you the secret search techniques that us trademark lawyers use a dead trademark is one that's no longer under prosecution of the uspto meaning that it won't be used to bar or prevent your trademark registration the uspto won't take the dead trademark records into consideration when they're evaluating your application but just because a trademark is dead doesn't mean that you're totally in the clear to use it if you run across a trademark that's identical to yours are super similar but it's dead that doesn't automatically mean oh great this trademark's available for me since this one's no longer for live a trademark will become dead if it's abandoned or cancelled it means that either the applicant failed to meet a requirement maybe they didn't respond to an office action on time or their response wasn't accepted or maybe somebody filed an opposition and successfully opposed the trademark registration in either event whatever happened the trademark was never registered and it eventually became abandoned and thus was marked as dead or it could mean that the trademark was registered at some point but maybe it was cancelled by a third party or owner didn't file the renewal or maintenance documents the fact that a trademark is dead that in itself isn't really that important what's really important here is why it's dead what killed this trademark that's what you want to know that's where the real treasure is so put your indiana jones gear on because we're gonna do some treasure hunting look the trademark clearance search process is complicated heck the whole trademark process is complicated i've been through law school and i've been a trademark lawyer for like eight years now and it's still complicated that's why i created brandish so you don't have to go through law school check the link in the description to find out more alright back to our indiana jones treasure hunting the tsdr is the trademark status and document retrieval and it's where you can find all the dirty details about a trademark if you find a dead trademark that's identical or very similar to yours you'll want to know exactly why it's dead because whatever killed it could come after your trademark next let's use this dead meta booster trademark as an example clicking the record shows us that it was abandoned okay that's good to know but more importantly why was it abandoned open up the tsdr by clicking this button and you'll see that it was abandoned because the applicant failed to respond to an office action we definitely want to know more about that click this documents tab and pull up a copy of the office action and we can see that there was a likelihood of confusion with another registered trademark so if i try to enter a trademark for meta booster or something similar to it for same or related types of goods and services this tells me that there's a pretty good chance that i too would receive an office action citing a likelihood of confusion and probably won't get the trademark registration so even though a dead trademark won't directly impact your trademark application or your chances of registration you certainly cannot disregard them all together even if the uspto won't use those dead trademarks in evaluating your application they can still give you a really nice glimpse into the potential future of your application and your trademark the clearance search is the most important part of the trademark application and registration process and it's more than just a quick search and browse of the internet or the uspto database conducting a thorough clearance search which includes digging into any of those dead records it helps to keep you from wasting your hard-earned money on a trademark application that will never go through and avoid potential legal issues from arising later on down the line ready to start your trademark application i can teach you the exact process that i use with my clients and the precise steps that you can take right now that'll have you ready to hit that submit button on the application in just seven days head to this link or check the link in the description to learn more about brandish and diy your trademark application today securing your trademark is vital to the success and growth of your business and your business and your future self will thank you if you take the right steps to properly secure and protect your trademarks if you got value out of this video hit that thumbs up button and share this video so other people can learn the importance of trademark registration and why we shouldn't disregard any of those dead trademark records when we're doing a clearance search and be sure to check out some of my other videos for more legal tips and tricks for your business thank you so much for watching i'm aiden durham and i'll see you next time
Thanks for your comment Delbert Heiner, have a nice day.
- Caryn Witman, Staff Member
dead trademark everything you need to know what is a dead trademark a dead trademark is a trademark that was once registered or applied for and that the Patent and Trademark Office doesn't recognize anymore individuals and companies can register and use a dead trademark what is a dead trademark according to the USPTO a trademark is a word phrase symbol for design for a combination of words phrases symbols or designs that identifies and distinguishes the source of the goods of one party from those of others how do I build trademark rights you don't need to register a trademark in order to build trademark rights in the United States in fact you acquire these rights automatically when you use your marks in commerce and distinguish yourself from your competitors trademark rights don't have an expiration date as long as you keep using the mark and continue to pay the licensing fees you remain the rightful owner of the market however registering your mark in the USPTO database or United States Patent and Trademark database might be beneficial to your business when you register a mark you are protected against the registration of similar marks a trademark can die for multiple reasons including generousity which when a trademarked term is used to refer to a general item or service and the USPTO then kills the trademark another example is abandonment when a mark holder stops using a trademark with no intention of using it again in the future for licensing assignment failure to respond lapse of registration and express abandonment are also ways a trademark can die acquiring a dead trademark what are the risks even if a trademark is listed as dead the original company or another party can be using the mark and therefore owning the common law rights to it the likelihood that they will sue you is small but it is a risk you shouldn't have to take before launching you to business you need to perform a common law trademark search on the name you want to use for your company especially in the case of dead trademarks you have to make sure you can use the chosen mark to avoid infringement a waste of your time and monetary losses a lawyer can help you complete a common law trademark search and understand if your chosen trademark can be registered or not if you are the original owner of a dead trademark and you want to revive it file a new application or simply begin using it again to claim a dead trademark you need to file an application with the USPTO the same way you would do with the mark that's never been registered before the USPTO will check the application and approve it for denying this is a difficult matter to navigate if you need consultation about registering a dead trademark post your question in the up counsel marketplace
Thanks Karina your participation is very much appreciated
- Caryn Witman
About the author
I've studied sociology of sport at Milwaukee School of Engineering in Milwaukee and I am an expert in communication studies. I usually feel nerdy. My previous job was atm machine servicer I held this position for 29 years, I love talking about everyday carry and photo: gabriel gurrola. Huge fan of Pat Sajak I practice formula 1 and collect classic cars.
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