Can a dead trademark be used [FAQs]

Last updated : Sept 19, 2022

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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 Tristan Schaudel, have a nice day.
- Debera Mclouth, Staff Member

hi Andy Nelson every so often I get asked by someone if they can start using a name or a logo or some other trademark of some brand from yesteryear or yesterday perhaps that they don't think is around any longer something that's you know long dead but they would like to revive it we see a lot of these you know what kind of brands resurrected so to speak some of those are probably from the same companies that have always put out those products or services but sometimes companies just go away and it could very well be that those marks are free to use and here's why so recall trademarks themselves to function to be trademarks and that property have to point they have to function right they have to point to a single source of goods or services and kind of deliver that kind of promise of goodwill quality that comes along with it if it doesn't do that if a trademark doesn't do that or no longer does that then it may be deemed what's called in legal circles abandoned and that's the concept you know is a trademark abandoned and if it's abandoned and no longer has that that function it has to have in order to kind of be the property of a trademark owner it may very well be free to use not something that should be taken lightly and should be done with some caution care and some research probably with counsel but it may very well be the case now here's an interesting very timely a brand that may very well be free to use immediately or maybe in the near future I don't know and it's this one right here and jemima a lot of you have probably seen the news that Quaker Oats is I think what they're using the terminology they're using is retiring the brand I don't think they use the word abandonment probably because legal counsel told them not to do so but they're saying retiring that may very well be since I think the import of that is that they are no longer going to use the name of the imagery period that sounds a lot like abandonment of the mark and if it's abandoned and no longer will function as a trademark for Quaker Oats being the source that at least the name I'm not sure about the imagery because the imagery may have copyright issues and and I'm not sure they're abandoning those or if they even own them what the situation is but the name itself and Jemima may very well be abandoned through express abandonment the company's saying they are not going to use it any longer so that's one instance where it's not the usual instance usually you see companies just kind of die and fade away and they don't resume use they cease news and then don't resume it that's the rub that's the question to be answered is it actually abandoned or is it just on hiatus for a bit again something to research not take not be casual about it but with this and Jemima you have express abandonment it would appear anyway I don't know I'm not sure so don't take this as gospel right here because I just don't know but there are situations where you see companies do that expressly abandon their rights and I think we might see some more of that those things you know and I say things because it could be a lot of distinctive things maybe images slogans names and other sorts of things that function as trademarks may very well be now or in the near future open for others to adopt if they so choose but anyway so you know full circle yes if some folks want to adopt brand imagery name slogans etc from yesteryear companies that are no longer around it is possible to do so so long as someone does the research of correct or correctly and determines that in fact those brands are those trademarks are in fact abandoned legally then they may be free to use at any rate if any questions about this video please feel free to shoot me an email Thaksin bye

Thanks akubusu your participation is very much appreciated
- Debera Mclouth

About the author

Debera Mclouth

I've studied environmental economics at Southern Illinois University Edwardsville in Edwardsville and I am an expert in architecture (outline). I usually feel shocked. My previous job was geological data technicians I held this position for 30 years, I love talking about flying disc and via ferratta. Huge fan of Jennifer Aniston I practice qi gong and collect sports cards.