How to Trademark an Abandoned Trademark

By Lee Hall, J.D.

How to Trademark an Abandoned Trademark

By Lee Hall, J.D.

Sometimes, a company goes out of business or changes its trademark. Once a trademark goes out of use, the owner relinquishes the rights to it. If the original owner no longer claims rights to the mark, it's available for use by a different individual or business.

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Think carefully before picking up a trademark previously used in commerce. Some marks have obtained broad public recognition. A revival of a mark by a different user can create difficulties. If you have considered this and still have interest in acquiring rights in an abandoned trademark, it is possible to adopt it for your own business.

1. Visit the U.S. Patent and Trademark Office (USPTO) database online.

Use the Trademark Electronic Search System to research the status of the trademark's registration. The database helpfully offers information on whether a trademark registration or an application is live or dead.

Use caution. Not every trademark listed as dead in the USPTO database is available for your use or registration. Some registrants neglect their federal registration yet continue to use the mark itself. In such cases, the prior user still has a right in the trademark under the common law.

Check for similar as well as identical marks. Always keep in mind that the point of laws on trademark is to prevent the confusion of consumers in a marketplace.

2. Find out when and why the trademark fell out of use.

If you can confirm that the earlier holder of the mark has no intent to use it in the future, under federal law, abandonment has occurred, and the mark is available.

Otherwise, if the mark has fallen out of use for three years or longer, and if you have completed the rest of the steps listed here, you may consider the trademark you desire abandoned and available.

3. Find out if the trademark is active in a state database.

A state registration protects the rights of a registrant in a trademark within the state's territory. You may not obtain rights in a mark registered in a state unless registration has lapsed or abandonment has occurred. The trademark registration comes from a state office, usually the Secretary of State. Check the database of the state in which the prior user did business.

4. Use the trademark.

When you adopt an available mark as your trademark, you acquire the right under the common law to keep other actors from using a similar mark in a fashion that would confuse consumers.

5. Register the trademark.

Registration helps you enforce your legal right to the exclusive use of the mark. Pursuant to the Lanham Act, federal registration of your mark confers rights throughout the United States, as well as its territories and possessions. If you choose to register your mark with the state only, you will acquire trademark rights only within that state.

6. Maintain your rights.

As a registrant, you must maintain rights in your mark by filing a declaration of continued use to keep your own registration alive. Before adopting a previously used trademark for use in your own business, make sure it's available. If it truly is abandoned and it makes sense for you to use it, adopt the mark, register it, and maintain your legal rights to it.

Before choosing to register a mark for trademark protection, find out if it was previously used/registered with the USPTO. If you have learned that the trademark was in fact abandoned, first consider any potential legal implications of continuing to register the mark as your own. Once you've done that, and you're ready to move forward, follow these steps to ensure proper registration and protection of your mark.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.