It depends!

That a trademark registration shows on the Trademark Office databases as “DEAD” do not necessarily mean that they are abandoned or not in use.

Under Section 45 of the Act, 15 U.S.C. § 1127, a mark is considered abandoned when “its use has been discontinued with intent not to resume such use,” and “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment.”

There are two elements to a nonuse abandonment claim: nonuse of a mark and intent not to resume use.  The key element here is “with intent not to resume”. Intent not to resume may be inferred from the circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

Evidence of nonuse of a mark for three consecutive years constitutes prima facie showing of abandonment, and creates a rebuttable presumption that the prior owner has abandoned the mark without an intent to resume use.

Before proceeding with use and registering an old, abandoned mark, is highly recommended to investigate as to why the old mark is no longer in use. Was it that the prior owner ceased operations? Is the registration dead and not in use? For how long has the desired mark has been abandoned? Is the desired mark being used by someone else other than the original owner?

A comprehensive search should be conducted by a trademark attorney that may include US Federal, U.S. State, and International (IR) trademarks with protection in the US plus a research of Companies, Domains, 1.000 TLDs, Images, Web, Social names, and Social media to find any potential uses of the abandoned mark.

If the result is that the old mark has not been used in commerce for at least three years a prima facie case of abandonment is easily established. If not, a different mark must be selected.

I’d like to help by advising you on how to do a clearance search of your brands, and subsequently apply for protection before using the mark in commerce in the U.S. and overseas.


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