Tips for Claiming an Abandoned Trademark

Quite often, finding the perfect trademark for your business can be overwhelming. It is even more frustrating when you find a suitable trademark, only to realize that it is already registered by someone else. In such a situation, you may be left wondering what step you should take next. Nonetheless, the good news is that you can always take a trademark that has been abandoned for a while and make it your own.

When claiming an abandoned trademark, there is a registration process to follow and adhere to. Before you start the application process, it is imperative to evaluate what made the previous applicant abandon the particular trademark. For legal reasons, you should also confirm that the previous owner of the trademark is not still using it to offer any goods or services.

If you intend to claim an abandoned trademark, here are our top pick tips to make it a success. 

1. Search the U.S Patent and Trademark Office (USPTO) Database Online 

Through searching the Trademark Electronic Search System, you can determine whether a particular trademark is abandoned or not. However, be aware that not all trademarks listed on the USPTO database are available for taking. As noted somewhere above, even if listed on the USPTO, some registrants might still continue using the trademark as their right under the common law. Therefore, to avoid unnecessary confusion, consider digging deeper to find out more about the abandoned trademark. However, most trademarks listed as dead on the USPTO are actually available for claiming.

2. Find out when and why A Particular Trademark Was Abandoned 

A trademark is declared abandoned under federal law if its previous owner has no intention of using it again. Also, it is crucial to find why the original owner abandoned the trademark. For instance, a given trademark owner can abandon a trademark after realizing it closely resembles another trademark to avoid confusing customers. In an explanation by legal author John DiGiacomo, dead trademarks may arise for various reasons other than similarity. Some of these could include the following:

• Failure to renew registration (after every 10 years)
• When deemed as abandoned by court rulings
• When deemed dead by the Trademark Office

Remember, trademark laws are there to ensure unique trademarks to avoid complicating the marketplace and confusing the consumers. If a trademark has not been used for three years or more or was abandoned willingly by the original owner, it is easier to claim.

3. Find Out Whether the Status of the Trademark Is Active In A State Database

Since the trademark rights of the registrant within the state’s territories are protected by the state registration, one thing is true. You may not be able to acquire the rights of a registered trademark within a state if the status still reads active. However, if you confirm that the registration has lapsed or the trademark is abandoned, you can submit your claim application to the secretary of the state through the state office to acquire the particular trademark.

4. Register the Trademark

At this point, we expect that you have followed the above trademark claiming guidelines and narrowed them down to the one you want. Now, it is time to enforce your legal rights and make the trademark your own. By doing so, you get to retain all the rights to exclusive use of the trademark as your intellectual property. However, you should note that a federally-registered trademark gives ownership rights throughout the U.S and its territories. Additionally, you may also choose to register the claimed trademark only with the state, meaning that the rights of the acquired trademark apply only within that state.

5. Maintain Your Rights

Finally, you would want to make the trademark fully yours and start using it in your business. Here, you will need to file a declaration of continued use to keep your registration active and in use. That way, you get to maintain the rights to your trademark. Remember, this is after confirming the trademark is available and truly abandoned. Another important thing to note, follow the process diligently and don’t try to cut corners when claiming an abandoned trademark. If you do, you may end up making mistakes hence incurring hefty losses.

While claiming abandoned trademarks can be exciting, it can be overwhelming and potentially risky. This is especially if you try to do it on your own without consulting respectable trademark experts. All the same, the above few tips can help you turn a lost trademark into your own.