Trademarks are unlike other forms of intellectual property. While patents and copyrights have defined boundaries and rigid time limits, trademarks are defined by use. The protections provided by a trademark extend as long as it is in use—potentially forever. And like any living thing, trademarks require care and maintenance to stay alive.
When a forgotten trademark stops being used, you can't simply use it as your own. Instead, you can fill the spot the expired trademark vacated with a brand new trademark that protects exactly what you need.
What does it mean when a trademark is abandoned?
To understand trademark abandonment, you need to understand trademark maintenance. Federal trademarks, for example, require periodic maintenance filings and fees. Those filings ensure that the trademark in use is still the one for which the owner originally filed protection. If your trademark changes, or if your product changes, it will be reflected in your filings to the federal government. A trademark that has outgrown or shifted from its original product has the potential to go abandoned.
Keep in mind that the trademark protects the relationship between your products and your customers, ensuring that your customers identify you as the source of those goods. Your trademark is literally the brand you put on your product that says you provided it. Think of the maintenance process as ensuring that the brand means the same thing to your customers. That relationship can change over time. The trademark and the product can grow together, can grow apart, and sometimes the trademark can die.
Keeping a registered trademark active requires both periodic maintenance filings and fees.. You can explicitly abandon the trademark by filing the right paperwork at the trademark office, which means intentionally putting down what was once your intellectual property. Alternatively, you can simply stop maintaining your trademark and let your trademark eventually fall into abandoned status.
How do I register an abandoned trademark?
You can't simply register an abandoned trademark. The trademark as it once existed is now dead. Where it once stood there is now an open space. In the past, the existing trademark prevented competitors from using the same kind of trademark. Those rights are now gone, creating an opportunity to create something similar, even related, but ultimately new. The relationship between your customers and your product will never be exactly the same as the relationship between the original mark holder and the original product. You cannot simply plug the old mark into your new business and expect the same result. The application you file will not be exactly the same.
What your new application can do is infringe the now dead trademark. No one can sue you for creating a new and similar trademark. Trademark infringement does not require the use of an identical mark—just one that's close enough to make customers think goods or services come from the same source.
Rather than re-animate its corpse, you are creating a new, living, breathing relationship with your customers. Protect that new relationship with a new trademark and fill the gap left by the dead trademark.
Trademark abandonment seems simple but really requires a sophisticated understanding of what trademarks are, what they protect, and where they end. Once you know that, it's easy to find a dead trademark and replace it with a new, living, and breathing trademark.
Abandoned trademark FAQs
Can I use a trademark that has been abandoned?
You cannot simply take over an abandoned trademark and use it, because when a trademark is abandoned, it becomes "dead" and loses all its legal protections. However, you can create a new trademark that fills the gap left by the abandoned one by going through proper legal channels first. The key difference is that your new trademark application will be treated as brand new, not as a continuation of the old one.
What does it mean when a trademark is abandoned?
A trademark becomes abandoned when the owner stops using it and has no plans to use it again—either the owner stops using the trademark in business for three years straight, or they fail to file required paperwork with the government. When a trademark is abandoned, it loses all legal protection and can no longer stop others from using similar names or logos.
How do I find out if a trademark has been abandoned?
You can check if a trademark is abandoned by searching the USPTO's free online database called TESS (Trademark Electronic Search System). This database shows you whether a trademark is "live" (still active) or "dead" (abandoned or expired). You also need to search for common law rights—this includes checking state trademark databases, business directories, and even doing Google searches. Many people hire trademark attorneys to do these comprehensive searches because missing something could lead to legal problems later.
What happens if I use an abandoned trademark without permission?
Using an abandoned trademark without going through proper legal channels can get you into trouble. Even though the federal trademark is dead, the original owner might still have local rights to use that name in their area. The safest approach is to file a new trademark application and let the USPTO examine whether your use would conflict with any existing rights. This process protects you legally and gives you official ownership of your new trademark.
How long does it take to register a new trademark for an abandoned mark?
Registering a new trademark typically takes eight to 12 months from start to finish, even if you're replacing an abandoned trademark. The timeline includes several steps: filing your application (which the USPTO reviews within a few months), a publication period where others can object to your trademark, and finally registration if no one opposes it. You'll also need to submit proof that you're actually using the trademark in business.
Can the original owner get their abandoned trademark back?
Once a trademark is truly abandoned, the original owner usually cannot get it back. They have only two months after the USPTO declares the trademark abandoned to file a petition to revive it, or up to six months if they can prove they never received the abandonment notice. They must also pay additional fees and prove the abandonment was unintentional.
Should I hire a lawyer to use an abandoned trademark?
Yes, hiring a trademark attorney is highly recommended when dealing with abandoned trademarks. The legal landscape around abandoned trademarks is complex, and making mistakes can be expensive and time-consuming to fix. A trademark lawyer can conduct thorough searches to make sure the trademark is truly available, help you file the proper paperwork, and guide you through potential challenges from the USPTO or other trademark owners. They can also spot potential problems you might miss, like similar trademarks that could cause conflicts.
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