You must be thinking: “If a trademark is abandoned, can I use it? There is no single answer to this question, as it depends on multiple factors.
Using an abandoned trademark may seem complicated, but once you have a complete understanding of what abandoned trademarks are, their potential risks, legal aspects, and implications, you can easily replace the dead mark with your own new, legal trademark.
In this article, we will explore the legal risks and implications of using abandoned trademarks and a step-by-step procedure for doing so legally.
So, let’s get started!
What is an Abandoned Trademark?
An abandoned trademark is one that its owner deliberately stops using for an extended period, typically three years or more, with no intention of resuming its use. Hence, it loses its legal protection, allowing others to potentially use it for their own purposes.
Trademark abandonment can also happen if the mark is not used correctly or its registration has expired.
Common Reasons Why Trademarks are Abandoned
Trademarks can be abandoned for different reasons, including:
Trademark Expired or Not Renewed: Trademark registrations have time limits. If the owner fails to renew their trademark registration or lets it expire without renewal, the trademark loses its legal protection.
Loss of Distinctiveness: A mark may be abandoned if it becomes generic or commonly used, causing it to lose its uniqueness.
Lack of Enforcement: Trademarks may be abandoned when the owner fails to take action against unauthorized use by others, thereby neglecting to protect their trademark rights.
Excessive Licencing: Another significant cause of abandonment is when the owner, who has stopped actively using the mark, licenses it to multiple parties, leading to confusion and potential loss of rights.
Can You Use an Abandoned Trademark?
Yes, in most cases, you can use an abandoned trademark. If it is no longer in use or its registration has expired, it may be available for use in commerce. However, don’t forget to conduct a thorough search and seek legal advice to ensure there are no potential conflicts or issues before using an abandoned trademark.
How to Determine If a Trademark Has Been Abandoned?
To determine if a trademark has been abandoned, follow these simple steps:
Check the Status: Visit the official website of the trademark office in your country (e.g., USPTO in the United States) and search for the trademark in their database.
Look for Renewal: Check the trademark’s registration status. If it has expired or not been renewed, it might be abandoned.
Search for Use: Investigate whether the trademark is actively used in the market. If there’s no evidence of recent commercial use, it could be considered abandoned.
Contact the Owner: Reach out to the trademark owner directly or through their attorney to inquire about the trademark status.
Public Records: Search for any public announcements or legal documents indicating the abandonment of the trademark.
Consult an Attorney: If you’re uncertain or want expert advice, consult a trademark attorney who can guide you through the process.
How to Claim and Use an Abandoned Trademark Legally?
Here’s a general guide on how to claim and use an abandoned trademark legally:
1. Confirm Abandonment: Ensure the trademark is truly abandoned by verifying its status with the official trademark office and checking for evidence of non-use or expiration.
2. Wait for Revival Grace Period: If the trademark is within the revival grace period, refrain from using it until that period expires.
3. Application for Registration: Next, proceed with applying for registration of the abandoned trademark with the trademark office in your country.
4. Use in Commerce: To strengthen your claim, start using the trademark in commerce for the goods or services it represents.
Legal Aspects of Using an Abandoned Trademark
When dealing with abandoned trademarks, several legal factors need consideration. Here are key aspects to keep in mind when using an abandoned trademark:
Abandonment Period and Intent
An important legal consideration is the period of non-use required for a trademark to be considered abandoned. This duration varies by jurisdiction but typically spans from several months to a few years.
Additionally, it is vital to determine if the trademark owner intended to stop using it permanently. If they had valid reasons beyond their control for not using it, the trademark might not be deemed abandoned.
Revival of Abandoned Trademarks
In certain cases, a seemingly abandoned trademark may still be eligible for revival by the owner. The grace period for revival varies by jurisdiction and can be activated by actions like filing a revival request and providing a valid reason for the delay in use or renewal.
Priority and Use
If the abandoned trademark is genuinely available for use, the person or entity who first starts using it in commerce may gain priority rights. This means that the first user, even without formal registration, could have certain protections against others using similar trademarks for related goods or services.
Possible Risks of Using an Abandoned Trade & Ways to Mitigate Them
When using abandoned trademarks, one must be aware of potential risks and take steps to mitigate them. Here are some possible risks and ways to get rid of them:
1. Risk of Infringement Lawsuits
Using an abandoned trademark may expose you to potential infringement lawsuits from other parties who claim prior rights to the mark. So, to mitigate this risk, conduct a comprehensive trademark search before using the abandoned mark to ensure it’s not already used or registered by someone else.
2. Geographical Limitations
Abandoning a trademark in one region doesn’t guarantee its abandonment worldwide. Using the mark in areas where it remains active could lead to legal challenges. To address this, research the geographic scope of the abandoned status and restrict usage accordingly.
3. Loss of Reputation and Brand Confusion
Adopting an abandoned trademark without thorough research might lead to a negative brand image or consumer confusion. Therefore, engage in a branding strategy that aligns with your business values and doesn’t cause confusion in the market.
4. Opposition from Other Trademark Owners
Even though a mark is abandoned, existing trademark owners may still contest your usage, claiming the likelihood of confusion with their active trademarks. In this case, seek professional legal advice and be prepared to defend your right to use the abandoned mark if challenged.
So, can we use an abandoned trademark? While utilizing abandoned trademarks might seem like a tempting opportunity, it comes with potential risks such as infringements and loss of reputation.
Therefore, before considering the use of any abandoned trademark, it is crucial to conduct thorough research and verify its abandoned status. Additionally, ensure that the trademark is not within the revival grace period, as it could still be eligible for revival by the original owner.
For expert guidance and to navigate the intricacies of abandoned trademarks effectively, it is highly advisable to consult a trademark attorney.