Dead Trademark Searching

Watch Out for Zombies

Abandoned Trademark Lists: To search for applications or registrations that are dead, the USPTO TESS Free Form search can be searched for dead[ld]. Note, however, this search yields over 6 million dead USPTO applications and registrations. Please read on for more information about abandoned and dead trademarks and trademark searching.

DEAD trademarks, marks that no longer have an active registration or active application at the USPTO, can be searched at TESS: Trademark Electronic Search System (http://tess2.uspto.gov/). TESS is for searching DEAD and LIVE, pending and registered USPTO Trademarks and viewing Trademark images.  

The best choices available for searching DEAD marks are: Word and/or Design Mark Search (Structured)  | and Word and/or Design Mark Search (Free Form)  | . If you are not familiar TESS, you may want to start on a Word and/or Design Mark Search (Structured) where common fields are available in pull down menus with a short assortment of operators to use.  

Most searchers don’t go looking for DEAD marks but if you want to: dead[ld] is the search term for a FREE FORM search combined with the rest of your search and in a Word and/or Design Mark Search (Free Form)  Search Term: Dead and Field: Live/Dead Indicator is how to search for just DEAD marks. On September 10, 2013 there were over 4 million (4,070,089) DEAD marks. LIVE trademarks are used by USPTO trademark Examining Attorneys to refuse trademarks for likelihood of confusion.

Why bother with DEAD trademarks if the USPTO trademark examiners do not use them for refusals? DEAD does not necessarily mean ABANDONED. DEAD trademarks might still be in active use by the former registrants. Many registrants forget to file the necessary filings to keep their marks alive or just don’t bother but are still using the marks. A former registrant who is still using a mark can potentially oppose or cancel an application or registration that uses their DEAD trademark.

Why TESS? Many trademark search engines do not contain DEAD marks and many trademark services do not have DEAD or inactive marks in their databases (like LegalZoom, Trademarkia, others).

What is in TESS? The Trademark Electronic Search System (TESS) contains the records of active (LIVE) and inactive (DEAD) trademark registrations and applications. Active or LIVE marks may be used by the USPTO examining attorney to determine that a "likelihood of confusion" exists. Inactive or DEAD marks may still be in use by the original applicants (who may still have common law rights) or the marks may be abandoned. See Can I Use An Abandoned Mark? For more information.

Why should I perform a search? One purpose of a trademark search is to help determine whether a “likelihood of confusion” exists, i.e., whether any mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark; and (2) used on related products or for related services.  Note that the identical mark could possibly be registered to different parties if the goods and/or services are in no way related, e.g., for computers and soft drinks.  WARNING: If your search reveals another mark that would definitely "block" your application based on the above standard, please note that if you file anyway, the filing fee is a processing fee that the USPTO does not refund even if registration of your mark is refused. Note that other reasons for searching exist, i.e., to determine if a potential trademark is inherently distinctive (see below).

Will my mark register if I do not find anything in TESS? No, not necessarily. USPTO trademark Examining Attorneys make decisions on whether marks may be registered on more than just a lack of “likelihood of confusion.”  After you file your application, the USPTO will conduct its own search and other review, and might refuse your mark, based on several different possible grounds for refusal.  Once you submit your application, the USPTO will not cancel the filing or refund your fee, unless the application fails to satisfy minimum filing requirements.  Filing an application does not guarantee registration.

How should I search? A thorough complete search is one that will uncover ALL similar marks, NOT just those that are identical.  In addition to studying the marks, you must also closely study the listed goods and/or services to determine possible “relatedness.”  

What is the Effect of  Abandonment of A Trademark Application or Trademark Registration on a Trademark?

Note: Effect of Express Abandonment on trademark: TMEP §718.01(b) Rights in the mark not affected. Except as provided in §2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Office, affect any rights that the applicant may have in the mark in the abandoned application.

[Common Law rights are not effected by an abandoned application or registration but overall rights are effected. A registration on the Principal Register has many statutory presumptions under the law, even a Supplemental Registration has more rights than a common law mark. See Principal v. Supplemental v. Common Law chart.]

Can I Use A Dead Trademark?

If your trademark search shows that someone used to have the trademark registered but now it is DEAD, the mark may be safely available. It depends on the facts and if the marks are still in use. One common reason for a trademark to go abandoned and become a DEAD mark is failure to complete the application process or failure to complete the process correctly. (70% of trademark applications are refused at least once.) While someone else may apply for a mark that is DEAD, that does not mean that the mark is safe for anyone because the mark may still be in use even if not registered. Trademark examiners do not and cannot take DEAD marks or common law marks into account when searching for Likelihood of Confusion conflicts with pending or registered mark. The owner of the DEAD or common law marks would have to pursue stopping the application themselves through an Opposition proceeding, Cancellation proceeding or in court.

One common reason why a trademark goes DEAD is FAILURE TO TIMELY FILE REQUIRED DOCUMENTS. The latest status on TSDR may read: Current Status: Registration cancelled because registrant did not file an acceptable declaration under Section 8” may mean that the mark has been abandoned and no longer in use or that the owner is still using the mark but just did not keep up with filing requirements. Another common document failure is “Current Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued.” These statuses may mean that the mark has been abandoned and no longer in use or that the owner is still using the mark but just did not keep up with filing requirements such as Sec. 8 (declaration of use) or Sec. 9 (renewal) filings.

Another reason for a DEAD mark is: “Current Status: Abandoned because the applicant failed to respond or filed a late response to an Office action” may mean that the mark was merely descriptive, had an inadequate specimen, had a likelihood of confusion with pending or registered marks or other reasons. The mark may be abandoned by the owner or the owner did not competently answer the refusal or is no longer using the mark.

What does a status of "dead" or "abandoned" mean?

15 USC §1127: Abandonment of mark. A mark shall be deemed to be “abandoned” if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

If an application shows a status of dead or abandoned, it means THAT specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. However, it does not necessarily mean that there are not OTHER marks which the examining attorney would cite. Also, there is always the possibility that an abandoned application COULD be revived (e.g., if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant establishes that a response was sent, and the USPTO simply failed to match it with the file in a timely manner, then the case will be revived). Also, regardless of the status of an application within the office, the owner may still claim common law rights. Extracted from http://tess2.uspto.gov/bin/gate.exe?f=help&state=4005:u7fvf.1.1#FAQ_DEAD

Many trademark verification or search services disregard trademarks that are marked DEAD in search records. Unfortunately, this does not necessarily mean that a trademark is available for someone else to use.  The Lanham Act expressly states that "[n]onuse" of a mark "for 3 consecutive years shall be prima facie evidence of abandonment." 15 U.S.C. § 1127. Itc Ltd. v. Punchgini, Inc., 482 F.3d 135 (2nd Cir., 2007). A search  or search report that is done mechanically and/or without knowledge of trademark law, may “verify” or “clear” a trademark for use that is still being used by a prior user and that prior user may still claim common law rights. A direct hit federal search or an inexpensive SAME DAY REGISTRATION service would probably not reveal this information.

 

EXPRESS ABANDONMENT

§ 2.68 Express abandonment (withdrawal) of application [37 C.F.R. Part 2-Rules of Practice in Trademark Cases]

An application may be expressly abandoned by filing in the Patent and Trademark Office a written statement of abandonment or withdrawal of the application signed by the applicant, or the attorney or other person representing the applicant. Except as provided in § 2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, affect any rights that the applicant may have in the mark which is the subject of the abandoned application.

Many trademark searches or trademark verifications may show that a mark is DEAD but not show that the mark was EXPRESSLY ABANDONED. In a case of express abandonment, a prior user of the mark may have sent a “cease and desist” letter to the new applicant or registrant letting them know that they would be sued or opposed if they continued the registration process any further and that continued use of the mark was intentional infringement. In this case, a DEAD mark that is an EXPRESSLY ABANDONED DEAD mark is a red flag that a potentially big problem exists with registering this mark rather than showing it is available. A quick, do-it-yourself search may not reveal this information or worse may indicate that the mark is clear. Getting a cease and desist letter early in the process may be getting off easy compared to being sued or trying to defend against an opposition or cancellation after substantial funds have been invested already.

ABANDONMENT-FAILURE TO RESPOND

§ 2.65 Abandonment.  [37 C.F.R. Part 2-Rules of Practice in Trademark Cases]

(a) If an applicant fails to respond, or to respond completely, within six months after the date an action is issued, the application shall be deemed abandoned unless the refusal or requirement is expressly limited to only certain goods and/or services. If the refusal or requirement is expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services. A timely petition to the Director pursuant to §§ 2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a response that avoids abandonment of an application. (b) When action by the applicant filed within the six-month response period is a bona fide attempt to advance the examination of the application and is substantially a complete response to the examiner’s action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of abandonment is considered. (c) If an applicant in an application under section 1(b) of the Act fails to timely file a statement of use under § 2.88, the application shall be deemed to be abandoned.

Failure to respond is the leading cause of trademark application abandonment. Only 30% of TEAS Plus applications proceed to publishing for opposition without an office action refusal (the percentage is worse for TEAS). Overcoming a refusal without knowledge and experience in trademark law is difficult and many refusals can’t be overcome even with knowledge and experience because the applications were for trademarks that have serious Likelihood of Confusion issues with registered or pending trademarks. Sometimes, the likelihood of confusion is with a junior user, someone who started using the mark later but got their application in sooner. In cases like this, a cancellation proceeding may be the answer for the senior, prior user who was late in getting their application into the USPTO.

Many  trademark problems, refusals & delays can be avoided or overcome by using Not Just Patents® Trademark Services. We do not just fill out an application and submit it, we work to protect your protectable legal rights and to keep costs as low as possible to get you less refusals and delays. We have many, many examples of common refusals that could have been avoided both by pro se applicants (no lawyer or a filing service that does not record their name on record because they are not attorneys) and applicants represented by attorneys. Call us at (651) 500-7590 and get a quote and ask for an example.

→Not Just Patents ® Legal Services provide a broad range of services for Intellectual Property Protection. If you are unsure what type of product or service protection is best for your business or just have a question, please call–a brief initial consultation is free at 1-651-500-7590.  See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.