A dead trademark is a trademark whose owner failed to complete or renew it’s registration with the USPTO. There are many reasons why a trademark becomes dead or abandoned. To make sure you understand how to avoid this pitfall, it’s a good idea to briefly review some aspects of trademark law
What is a Trademark?
A trademark is a unique and distinct logo, design, image, phrase, etc. that separates the goods or services of one source from another. Trademark owners include individuals, businesses, and legal groups. Trademarks are often found on labels, packaging, or directly on products. Sometimes you’ll find trademarks on buildings, too.
A trademark lets you know who owns a specific good or service. You can license a trademark to other groups so that another group can produce a good or service using your trademark legally. Using a trademark without a license is brand piracy.
The primary function of a trademark is to create a source of origin. Even if you license your trademark to others, the trademark establishes you as the source. Trademarks help you keep exclusive rights over a logo, design, image, phrase, etc.
There are two main symbols that represent trademarks. One is the trademark symbol, ™, and the other is the registered trademark symbol, ®.
The trademark symbol establishes common law protections. You can only use the registered trademark symbol after you have registered with the U.S. Patent and Trademark Office.
Common Law Usage
Common law protects trademarks that are not registered with the U.S. Patent and Trademark Office. In the state of Virginia, the registration of a trademark does not cancel out common law rights.
Trademarks registered with the U.S. Patent and Trademark Office follow a certain set of guidelines. To register a trademark, you need to fill out an online application and give the USPTO information about your trademark. Once you fill out the application it normally takes about nine months or more before it’s approved. After that, you will receive a certificate from the USPTO.
When is a Trademark Dead or Abandoned?
Now that you know a little more about trademarks, when is a trademark dead? Virginia state code refers to dead trademarks as “abandoned” trademarks. If you read the code, any time it talks about an abandoned trademark, it’s the same thing as a dead trademark.
In the federal context, the USPTO lists as DEAD, all trademarks that:
- Were filed but never actually completed registration
- Were registered, but subsequently were not renewed
What is a Dead Trademark?
Broadly, a dead trademark is a trademark that the U.S. Patent and Trademark Office does not recognize anymore. There are many different reasons a trademark can lapse. If a trademark lapses or dies for some reason, it may become difficult to register for it again.
But keep in mind that just because a trademark registration is dead, that doesn’t mean the trademark owner isn’t still using the mark.
Why is it Difficult to Register for a Dead Trademark?
If someone allows a trademark to lapse or die, you might have a hard time registering for that trademark in the future. When a trademark dies, that usually means the owner let the registration lapse or that the USTPO discontinued the trademark for some other reason.
Although the trademark lost official status, it still has common law protections. If you want to claim a dead trademark, then you should talk to an attorney to make sure you don’t violate someone’s common-law rights. Even without registration, owners can keep using a trademark.
Reasons the USTPO Stops Recognizing a Trademark
The U.S. Trademark and Patent Office has its own rules for dead trademarks. If you want to avoid abandoning your trademark, it’s crucial to understand why the USTPO stops recognizing trademarks.
You also have the option to abandon your trademark on purpose if you no longer want to use it.
If you no longer want your trademark, you can abandon it.
People let trademarks die for two main reasons. The first reason you might abandon a trademark is if you no longer want to use it in commerce. The other reason is if someone files a Notice of Opposition against you. A Notice of Opposition means that someone thinks your trademark will violate their pre-existing rights.
This is why some marks will show as DEAD in the USPTO listing, even though they were never actually registered.
If you hold a trademark, every few years you have to prove you are still using it in commerce. You have to file an application five years, and then ten years from the first time you first registered the mark.
If you don’t take this step, you trademark registration will lapse and the registry will list your mark as dead.
Some states, including Virginia, have additional rules about registration lapse. Be sure to find out if your state has special rules so your trademark doesn’t lapse without your knowledge.
If the U.S. Patent and Trademark Offices asks you to give extra information about your trademark and you don’t reply, your trademark registration will die. Always comply with requests from the USPTO and appropriate state commissions.
Genericide sounds more complicated than it really is. It simply means that your trademark has become so generic that it’s no longer associated with a specific good or service.
If genericide happens, the USPTO can require you to abandon the trademark. A few famous examples of genericide include: flip phone, trampoline, and videotape. Companies at some point had trademarks for these phrases, but their use became so popular that the trademarks died.
If you worry about genericide and your trademark, there are ways to prevent it.
Virginia Code and Dead Trademarks
Virginia has some of its own rules when it comes to dead trademarks. Here’s how Virginia defines a dead trademark:
A trademark is dead if you can’t prove you plan to use it again. An example of this is if you don’t use your trademark for three years in a row. It’s a dead trademark unless you prove you plan to use it again. Any act that causes the trademark to lose significance is also abandonment.
A trademark protects individuals, companies, and legal groups that offer unique goods and services. With both common law and registered protections, a trademark is a good way to protect your brand.
Remember what makes a trademark dead, though. Unless you want to abandon your trademark, make sure you keep up with registration and respond promptly to the U.S. Patent and Trademark Office.
In addition, remember to protect your trademark from genericide. Finally, always keep up with the related codes in your state because your state might have extra rules for abandoned trademarks.