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Written by : Morgan Ruffin
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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 Ken Tensley, have a nice day.
- Morgan Ruffin, Staff Member
hi I'm Andre mink of the father of trademark factory the only firm in the world that offers trade marking services with a predictable result for predictable budgets because our trademark agents and trademark attorneys will help you trademark your brand with a free comprehensive trademark search for a single all-inclusive flat fee with a hundred-percent money-back guarantee I am famous for explaining intellectual property so that a nine year old would understand and today's question gonna answer is what happens if you don't renew your trademark registration on time so after your trademark registers in most countries you get that registration for ten years that you can renew for another 10 and then another 10 and another 10 in Canada that period is 15 years probably gonna be 10 years soon but for now it's 15 and another 15 and another 15 if you need to renew so the question is what happens if you don't renew your trademark registration after that 10 or 15 years and what happens is that your trademark will be considered abandoned so the trademarks office will not send you any reminders what they're gonna do is they're gonna sit and wait and see if you yourself remember or your lawyers or your trademark agents our trademark attorneys are gonna remind you to renew your trademark in time because if you don't the assumption is you're not really interested in protecting the brand and one of the functions of a trademark office is to clear out what they call the deadwood so if the trademark owner is not taking the steps to maintain registration they assume that the trademark owner is not interested and by doing that they clear out the way for new people for new companies to claim that same brand and you cannot usually revive your trademark registration once it's abandoned it's abandoned if you're still interested in having that brand if you're lucky enough that nobody else jumps ahead of you yes you can file a new trademark application for the same trademark and hopefully you're going to be able to get that and interestingly sometimes what happens is because the requirements and just local regulations with the trademarks office sometimes change what was trademark Apple 10 or 20 or 30 years ago may not necessarily be registrable now so it's not an issue with renewals so there is no new examination of your trademark application so if your trademark registered 50 years ago and the rules changed but your trademark is registered it's easy for you to renew it they're no they're not gonna say well you know what the rules change that you can't renew it anymore but if you let it lapse and it gets abandoned then you have to file a new one so the new trademark application will be examined based on new rules and that doesn't guarantee you that the new one will also be registered so it's very it's extremely important not to miss those deadlines and if you file your trademark yourself make sure that you triple check to put it in your calendar 10 years or 15 years down the road to renew your trademark and if you have somebody else to do this for you then make sure that they're still around that they are not going to forget and that they're still taking care of this and again with trademark facture obviously that's one of the things we do for our clients whenever we register your trademark we'll put it everything in in in our docketing system to make sure that whenever your renewal time comes we'll will not forget about this and well notify you can say well are you interested in renewing that brand and just to give you an idea of renewal costs I'm a nominal so the government feel be a few hundred dollars our fee will be your honor dollars depending on the package that you chose so if you've been in business with that brand for 10 or 15 years renewal costs are going to be the least of your concerns this is just one of many short videos where I'm providing specific no BS answers to your questions about trademarks so subscribe now and get notified whenever the next video goes live seriously subscribe because there's a lot of information that I'm sharing and if you got some value out of this today I can guarantee you there's gonna be a lot of other videos that will help you protect your brand and speaking of protecting your brand if you have a brand that you want to protect order your free comprehensive trademark search with register ability opinion from trademark factory by filling out the form at free TM Sarge com3 TM Sarge calm and we'll we'll be happy to take it from there I'll see you in the next video you
Thanks escrimis5 your participation is very much appreciated
- Morgan Ruffin
About the author
I've studied escapology at Wayne State College in Wayne and I am an expert in machine learning. I usually feel good. My previous job was logging worker supervisor I held this position for 23 years, I love talking about trainspotting and heliskiing. Huge fan of Mia Rose Frampton I practice sailing and collect comic books.
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