How to Revive a Dead Trademark

If your own trademark has fallen into ‘dead’ or ‘abandoned’ status, you may be able to file a petition to revive it. In order to file the petition, you must show that the abandonment was unintentional, and you must submit the petition within 60 days of the Notice of Abandonment (learn how to respond to a Notice of Abandonment in detail). If filing the petition is not possible, you will need to register with the USPTO again. When looking to revive the trademark of another business, be sure that they are no longer using the mark in commerce before submitting an application to the USPTO.

What Causes a Trademark to Die?

A federally-registered trademark provides valuable protections that will never expire, as long as the mark is used consistently and the trademark owner meets renewal deadlines.  However, if these conditions aren’t met, the USPTO could change the status of the trademark from ‘active’ to ‘dead.’  How does this happen?  There are three ways that a trademark could wind up dead.  The first occurs when a trademark application does not mature to a registration, whether it’s because it was too similar to an existing mark or the applicant simply abandoned the process.  Any application, even if it is never federally registered, will remain in the USPTO database forever.

Another reason for a trademark to become dead is that the owner failed to renew the mark.  The USPTO requires that a registered trademark be renewed by certain dates.  For new trademarks, owners will need to renew between the fifth and sixth year, and then again between the ninth and tenth year.  After that, trademark owners will file renewals every ten years.  Failing to meet those deadlines will also result in a dead trademark.

Finally, a trademark may also become dead if a third party petitions to cancel it.  A petition could be filed if someone feels it is confusingly similar to their own mark.  If they can show that the current owner has stopped using the mark, this may be ground for killing a mark as well.  Typically, the mark would need to go unused for three years for the USPTO to consider the trademark dead.  In some cases, a petition may also be filed if the mark has become generic over time.  Kleenex, for example, began as a specific brand of facial tissue, but has come to represent all brands of tissue over the years.

How to Revive Your Own Dead Trademark

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In the event that your trademark has been abandoned unintentionally, you may be able to file a Petition to Revive.  In order to qualify for this petition, though, you must be able to swear under oath that the lapse was unintentional.  You will also need to file this petition within 60 days of the date the Abandonment Notice was issued (Not 60 days from the date you receive the notice).

If a Petition to Revive is not possible, you can receive some limited trademark protections simply by using the trademark in the marketplace again.  However, you should know that these protections will be extremely limited.  You will not be protected in disputes that occur outside the region your business is based, and it will be much more challenging to fight infringement in court.  In order to restore your full trademark protections, you will need to begin the process to register your trademark again.  This includes conducting a comprehensive trademark search and filing an application with the USPTO.

How to Revive Someone Else’s Dead Trademark

It is sometimes possible to revive the dead trademark of another business and obtain registration for yourself.  When beginning the trademark registration process, the first thing you should do is conduct a comprehensive trademark search (learn about how to conduct a search) to learn the status of the mark you plan to use.  If the USPTO lists your trademark as ‘dead’ or ‘abandoned,’ however, this does not necessarily mean that the mark is available for registration.

If the original owner of the trademark is still using it in commerce, regardless of USPTO status, then they may still maintain some trademark rights.  A broader search is often necessary, to check the business’s website, products, and social media to see if the mark is still being used.  Work with an attorney to conduct this search, and to determine if the mark is eligible for registration.  If so, submit your application to the USPTO as soon as possible.

Reviving Dead Trademarks

In some cases, it is possible to revive a dead trademark.  If your trademark has fallen into ‘dead’ or ‘abandoned’ status unintentionally, you may petition the USPTO within 60 days of the Notice of Abandonment.  After the 60 days have lapsed, or if you cannot document the abandonment was unintentional, you will need to file a trademark application with the USPTO.  For those looking to revive someone else’s dead trademark, you may be able to do so if the original owner is no longer using the mark in commerce.  Work with an attorney to understand the likelihood of approval, and register the mark with the USPTO as soon as possible.

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.

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