The first step to registering any trademark is to search the United States Patent and Trademark Office’s (USPTO) database. This database contains a listing of all pending, registered, and dead trademarks. In particular, it provides valuable insight into determining the success of your application.
What is a LIVE Trademark?
A LIVE trademark is one that is actively registered or pending with the USPTO. In particular, a mark is pending if the USPTO is currently examining the application to determine if it meets the minimum registration standards. When searching, particular importance should be paid to LIVE trademarks. Specifically, if a trademark examining attorney believes that another trademark is confusingly similar to your trademark registration, they will issue a rejection.
What About DEAD Trademarks?
DEAD trademarks on-the-other-hand have either gone abandoned or have been canceled for a specific reason. For example, a trademark is considered DEAD if the trademark owner fails to pay its required maintenance fee. While these DEAD trademarks are no longer registered with the USPTO, care should be used when registering the same or similar marks.
When attempting to register a DEAD trademark, the history of the DEAD mark should also be carefully examined. By examining the history of the DEAD mark, valuable insight is achieved. Determining how and why a particular mark has since gone DEAD allows you to craft a game plan moving forward. Having a strong gameplan ensures that your brand and hard work are protected. Common reasons for a LIVE trademark going DEAD include:
- Failure to pay a maintenance fee;
- Non-use of the trademark in commerce; and
- Failure to respond to an outstanding Office Action.
However, just because a trademark is now DEAD does not necessarily mean that it is available to use. Below are two examples where a trademark may be DEAD, but not necessarily available for use.
Coca-Cola Discontinues TAB Diet Soda
Earlier this year Coke announced that it will no longer be producing its TAB line of beverages. This is significant because the USPTO requires registered trademarks to show continued use of their mark in commerce. When Coke officially stops the production of its TAB beverages, it will no longer be using the TAB mark in commerce for its light beverages. Accordingly, Coke will subsequently lose what rights it had to the name and the mark will go DEAD.
However, while Coke’s TAB trademark for its light beverages will eventually go DEAD, Coke is actively working to preserve at least some rights in the name. In particular, before its announcement, Coke filed an intent-to-use trademark application for a TAB brand of clothing. If registered, the TAB registration for clothing will allow Coke to preserve a significant amount of rights in the nostalgic TAB brand.
The Absent Minded Owner
In general, trademark rights are not contingent on obtaining a federally registered trademark. In particular, trademark rights to a name begin to vest once someone begins using their particular trademark in commerce. This limited common law protection is regardless of whether or not they filed a federal or state trademark application. Accordingly, such common law use of a mark plays an important role in the event of an absent-minded owner.
Specifically, a trademark registration may go DEAD if an owner neglects to pay the required maintenance fee. In such cases, a search of the USPTO’s database will show the mark as being DEAD. However, if the owner is still using the mark in commerce, it will not necessarily be available for use. In particular, even if you are able to obtain a federal trademark registration, the original owner could assert its prior, common law, use of the mark against your registration. In such situations, the original owner can assert its prior use of the trademark to cancel your federal registration.
Even if a trademark appears DEAD on the USPTO’s database, it is important to take a deep dive into its history to ensure that the mark is actually available. By taking the time to properly vet the mark from the start, you can save countless headaches, legal fees, and even loss of your mark entirely in the future.
A DEAD trademark is no longer registered or being examined by the United States Patent and Trademark Office.
A LIVE trademark is an actively registered or pending trademark registration with the United States Patent and Trademark Office.