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Written by : Colin Koch
Current : 1988
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if the trademark registration has lapsed can i use it i'm going to answer that question in the next four minutes i'm angela langlotz trademark and copyright attorney i'm going to spend our time today answering a viewer question so jason bowden distal this is for you jason messaged me and he asked i have a question if a trademark is dead or cancelled and a company hasn't used it within 10 or more years is it safe to register it for my company okay so you go into the trademark database you see the mark that you want to file and you go to look at it and it's dead it's dead so you think wahoo i can use it well not so fast not so fast you might not be able to use it we need to do a little bit more digging now remember that trademark rights are acquired through use right not just registration you have to keep using the mark in order to maintain your trademark rights if you don't use the mark then your trademark rights can be lost irrespective of your registration status so we have to very carefully look at this so just because somebody had their trademark lapse okay and it can lapse for a number of reasons it could have been cancelled can be canceled for non-renewal it can be cancelled because somebody else filed a cancellation proceeding against that trademark it can be cancelled because somebody went in and said we are abandoning this trademark okay so we have to look at the record and see exactly what happened if it's cancelled because somebody else filed a cancellation proceeding then we probably want to investigate whether the people that filed the cancellation proceeding are still using the trademark that they were using when they filed the trademark cancellation proceeding because that mark that they they were using was probably the reason why they had the trademark registration in question canceled right we also have to look at this just because a mark is canceled that doesn't mean that you can still use it because a subsequent applicant may have come in between the time the trademark registration lapsed and the time that you looked at it and got all excited there may have been someone else come in and register a mark that now would be considered confusingly similar to the mark that you're proposing to use so the the bottom line is you really need to look at the record and consider all of the possibilities when you are looking at using any mark not just an abandoned mark but in general if somebody hasn't used a trademark for a number of years we usually say two if you haven't used the trademark and you don't have what we call excusable non-use then the trademark rights would lapse you may still have a trademark registration but somebody could come in and petition to cancel your mark for non-use so if you don't use your trademark the bottom line is you're likely to you to lose it either because you can't renew because you're no longer using the mark or because somebody else sees that you're no longer using it and files a cancellation proceeding so either of those things are possible and there's always the wild card of some intervening filing going on that may also affect your ability to use that trademark that's been canceled so jason i hope this helps you i'm going to tag you in this video so that you know that i answered your question if anyone else has questions you can drop them into the comments underneath the video i will answer them in a future live if you would like more trademark goodness i have a youtube channel you can just go to youtube and search trademark doctor you'll find me there you can also find me on facebook at facebook.com forward slash trademark doctor and online at trademarkdoctor.net
Thanks for your comment Jacquelyne Defalco, have a nice day.
- Colin Koch, Staff Member
attorney here going live as I do every weekday to discuss trademark issues yesterday somebody asked me that if I do a search through the uspto.gov website and I find a trademark that's expired is it fair game to use now that's an interesting question and one that comes up a lot and the answer is it has so many things in law maybe so expired trademarks can in some circumstances be revived and in addition to that just because the trademark has expired it means the registration has expired it may still very well be in use however and you're gonna have to do more than just a search of uspto.gov database in order to find that out now marks may expire for a number of reasons and one of the most common reasons for a trademark to expire is because the trademark owner doesn't file their maintenance documents so there are certain documents that need to be filed between years 5 & 6 and then after year 10 to be able to and then every 10 years thereafter to be able to maintain the trademark and in some cases either the attorney doesn't docket it or the trademark owner files himself and doesn't doesn't make sure that they put it in their calendar the registration that needs to be maintained on these certain dates or they may have not updated their address with the Patent and Trademark Office so the notice is mailed to them but then it doesn't arrive because they don't have a forwarding address or they didn't change their address or they forward to dip at the forwarding has expired there's a whole bunch of reasons why the notice that the maintenance documents need to be filed doesn't show up so what people need to do is they need to make sure that they filed what's called a declaration of use but sometimes that doesn't get filed they maced we'll be using the mark in commerce in exactly the same way they used it prior to the expiration of the registration it's just that the registration has expired so what happens then if they miss the deadline to file the maintenance documents there's a grace period after that during which time they can file the maintenance documents and maintain the trademark you just have to pay a fee and so if you see a mark that's expired it doesn't necessarily mean that it's expired they may still be within the grace period we don't know if they're still using the mark but have missed the deadline they still have all the common law rights that they used to have they just don't have a registration so what does that mean it means that it's possible for someone else to come in even after the grace period has expired it's possible that someone else may come in apply to register that mark or a mark that would otherwise infringe be granted a registration because their registration is no longer live in the USPTO database so of course the trademark examiner doesn't know that they're still using it because the only place that they look is the USPTO database so they could grant a registration to somebody else and then that registration could be cancelled when the superior rights holder that's the person that's been using it all along even though their registration has lapsed when the superior rights holder realizes oh hey wait someone else got a registration for for this mark that we've been using for twenty years just because we forgot to file the maintenance documents they may apply to cancel that registration because they have been using it longer and they actually have prior rights nationwide so when people don't file their maintenance documents it kind of it kind of messes up everything especially for the former registrant who now may have to litigate over who has the better trademark rights with somebody who subsequently came in and filed and got a registration for that mark even though the mark was still being used so numoral the story is if you're going to adopt a mark that is expired make double-dog sure sure sure be sure sure that you have investigated whether or not that mark is still in use and if you are a registrant be sure to make a note of when those maintenance documents are due I'm Angela Liang Lots and I go live every weekday to talk about trademarks copyrights other intellectual property issues and you can find me online at trademark dr. net if you go to my facebook page at facebook.com forward slash trademark doctor and like my page you'll be notified every time I go live if you like this video please share it with others I'd give you permission and would be delighted for you to do so I'll see you tomorrow
Thanks Mellisa your participation is very much appreciated
- Colin Koch
About the author
I've studied measure theory at Youngstown State University in Youngstown and I am an expert in modern history. I usually feel grateful. My previous job was marine surveyor I held this position for 2 years, I love talking about shopping and scuba diving. Huge fan of Carey Mulligan I practice table tennis and collect patches (also badges).
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