How to Revive a Dead Trademark
Understand why your trademark rights were lost., Determine the current status of the trademark., Start using the trademark again., Register the trademark.
Step-by-Step Guide
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Step 1: Understand why your trademark rights were lost.
There are three primary ways a trademark owner can lose the rights to that trademark: (1) abandonment; (2) improper licensing/assignment; or (3) the mark has become generic.The most common of these, however, is abandonment—the owner of the trademark has stopped using the mark with no intention of using it again.
Not using a trademark for at least three consecutive years constitutes "prima facie"—a legal term meaning "accepted as correct until proved otherwise"—evidence of abandonment.
This stems from the policy behind trademark law, in that the law only will protect trademarks that are actually being used in the course of business.
If your trademark has been improperly licensed or has become generic, you are likely out of luck because your trademark has ceased to define your product in the public marketplace (but consult the last section of this article for more information); however, if the issue is abandonment, you have a much better chance of reviving your lapsed trademark. -
Step 2: Determine the current status of the trademark.
The USPTO maintains a database of the status of all trademarks that are registered in the United States.
You can search this information using the Trademark Electronic Search System provided by the USPTO to determine if your trademark is in use by someone else, or if it has been simply marked as abandoned.If at least three consecutive years have passed since you have used the trademark and, in that time, someone else has begun to use the mark or registered the mark with the USPTO, you will likely not be able to revive your trademark and must instead purchase the rights from this new user.
However, if you can prove that you intended to use the trademark again, you may be able to recover your rights to the mark.It is best to consult with an attorney specializing in intellectual-property law if the facts of your particular situation begin to increase in complexity.
You will likely need to mount a complicated legal argument to protect your rights, and this requires specialized experience.
If no one is using your abandoned trademark, proceed with the following steps. , The best way to protect your rights in a particular trademark is simply to use it.
Federal registration is not required—a judge will consider whether a trademark is actually being used when deciding whether its owner should be given legal rights relating to that trademark., To secure your ownership of the trademark and prevent future disputes, it is a good idea to register your trademark with the USPTO in addition to starting to use it again.
Although registration with the USPTO helps to establish a trademark for the sole use of a business or person, it is not required that you register your trademark.
Doing so, however, will make your case much stronger down the line if someone tries to challenge your trademark rights in the future. -
Step 3: Start using the trademark again.
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Step 4: Register the trademark.
Detailed Guide
There are three primary ways a trademark owner can lose the rights to that trademark: (1) abandonment; (2) improper licensing/assignment; or (3) the mark has become generic.The most common of these, however, is abandonment—the owner of the trademark has stopped using the mark with no intention of using it again.
Not using a trademark for at least three consecutive years constitutes "prima facie"—a legal term meaning "accepted as correct until proved otherwise"—evidence of abandonment.
This stems from the policy behind trademark law, in that the law only will protect trademarks that are actually being used in the course of business.
If your trademark has been improperly licensed or has become generic, you are likely out of luck because your trademark has ceased to define your product in the public marketplace (but consult the last section of this article for more information); however, if the issue is abandonment, you have a much better chance of reviving your lapsed trademark.
The USPTO maintains a database of the status of all trademarks that are registered in the United States.
You can search this information using the Trademark Electronic Search System provided by the USPTO to determine if your trademark is in use by someone else, or if it has been simply marked as abandoned.If at least three consecutive years have passed since you have used the trademark and, in that time, someone else has begun to use the mark or registered the mark with the USPTO, you will likely not be able to revive your trademark and must instead purchase the rights from this new user.
However, if you can prove that you intended to use the trademark again, you may be able to recover your rights to the mark.It is best to consult with an attorney specializing in intellectual-property law if the facts of your particular situation begin to increase in complexity.
You will likely need to mount a complicated legal argument to protect your rights, and this requires specialized experience.
If no one is using your abandoned trademark, proceed with the following steps. , The best way to protect your rights in a particular trademark is simply to use it.
Federal registration is not required—a judge will consider whether a trademark is actually being used when deciding whether its owner should be given legal rights relating to that trademark., To secure your ownership of the trademark and prevent future disputes, it is a good idea to register your trademark with the USPTO in addition to starting to use it again.
Although registration with the USPTO helps to establish a trademark for the sole use of a business or person, it is not required that you register your trademark.
Doing so, however, will make your case much stronger down the line if someone tries to challenge your trademark rights in the future.
About the Author
Helen Anderson
Helen Anderson is an experienced writer with over 12 years of expertise in lifestyle and practical guides. Passionate about sharing practical knowledge, Helen creates easy-to-follow guides that help readers achieve their goals.
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