How Do I Claim an Abandoned Trademark?

Question: How do you claim an abandoned trademark?

Answer: In order to claim an abandoned trademark, you must follow the registration process from the beginning and submit your own application for the trademark.

However, it’s important to carefully evaluate the trademark and consider why the last applicant allowed it to abandon.

We often see people who come across a trademark on the USPTO’s website that is “DEAD” or “ABANDONED” and think that they can acquire it for themselves. Unfortunately, it’s not so easy.

There are two main considerations when attempting to claim an abandoned trademark.

1. Is it still in use?

If the company that filed the now abandoned trademark is still using the trademark to offer goods and services, then they still have common law right in the trademark.

If you try to file for the registration or start using the trademark yourself, you could still be violation of their trademark rights and could be sued for trademark infringement.

2. Why was the trademark abandoned?

The second consideration is that there’s probably a reason that the trademark was abandoned. One of these reasons could be that it was refused by the USPTO because it’s too similar to another trademark. Keep in mind, when trademarks are refused, it’s not always because there’s an exact match to the trademark, but rather something that’s similar.

If you go to refile a trademark that was already refused, you may end up just receiving the same refusal, while also infringing on the other registered trademark that is causing the refusals.

Final thoughts

Ultimately, if a trademark is truly abandoned or dead, you can refile for the trademark and obtain registration, but you will need to go in and start from scratch. You can’t just take over someone else’s application or registration.

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Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.