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 things you need to be aware of when considering claiming an abandoned trademark.

1. 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. The second thing to be aware of is that there’s probably a reason that the trademark was abandoned. One of the 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.

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 the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.