How to Claim an Abandoned Trademark
To claim an abandoned trademark, you use the mark in commerce connected to your goods and services. This will give you common law trademark rights over the mark and pave the path for federal registration.
Claiming an abandoned trademark can be tricky because not all trademark owners abandon their mark on purpose. Before your first use of the mark, make sure to document why you think the mark is abandoned, as well as your attempts to contact the original owner. This will help prove you’re allowed to use the mark if anyone alleges infringement.
In this article, we'll cover:
Claim an Abandoned Trademark
Technically, abandoned trademarks can’t be “claimed.” A trademark registration can expire, which may give other businesses the opportunity to use marks that are similar or identical and might have previously caused likelihood of confusion. By using a trademark they previously had no right to, they are “claiming” that trademark in the public space, even though it is technically an entirely new trademark.
A new business cannot claim an abandoned mark’s federal registration. A new application will have to be submitted for federal registration with the United States Patent and Trademark Office (USPTO). (Trademark registration can be transferred, just not claimed if it is abandoned.)
How do I claim an abandoned trademark?
A trademark is abandoned when it stops being used in connection to selling goods/services. When a business stops using their trademark for three consecutive years with no intent to use it again, it is considered abandoned. What can you do to claim it?
1. Check that the original trademark owner is not planning to re-use the mark.
Remember, a trademark is only considered abandoned if it has been three years since it was used and the original owner has no plans to start up use again. If a re-launch is imminent, the company has filed for bankruptcy, or there was a workers’ strike, these might be considered valid “pauses” and they would still own the mark.
Reaching out to the trademark owner can help you determine if you actually have a legal right to use the mark. Reaching out also helps bolster your case if they eventually try to sue you for trademark infringement.
2. Confirm no one else has started using the mark.
Beyond the original trademark owner, someone else might be using the mark because it has lapsed, just like you want to. You’ll need to conduct a trademark clearance search to find out.
This involves looking at the Trademark Electronic Search System, the USPTO’s Gazette, state trademark databases, and elsewhere online. Search for the mark—or one that is confusingly similar—and confirm that you are in the clear to use the mark.
3. Start using the trademark in commerce.
A trademark begins gaining rights as soon as it is used in commerce. If you’re selling golf clubs, the trademark needs to be visible to potential consumers. Maybe this means the mark is physically printed on the packaging or the tag. If you’re selling a golf caddie service, maybe the trademark is on a brochure. Either way, consumers need to see the mark in connection to purchasing your offerings.
At this point, you have common law trademark rights and have exclusive rights to the mark in your business’ geographical area. If you want to expand those rights, you’ll need to broaden your business’ footprint or apply for either state or federal trademark registration.
Federal registration is what most people go for, as it has the most robust protections. Filing for federal trademark registration can be done on your own or with the help of a lawyer.
Our team of trademark experts and attorneys can help you claim an abandoned trademark with federal registration! Check out our Trademark Service to learn more.
Revive an Abandoned Trademark
Reviving an abandoned trademark is done by the original trademark owner who either accidentally or intentionally let the trademark’s registration lapse. If you own a registered trademark and either stopped using it in commerce or stopped paying USPTO fees, but you want to maintain registration protections over that trademark, you might need to revive it.
How do I know if I’m allowed to revive my abandoned trademark?
To revive an abandoned or “dead” trademark, first check if someone else has swooped in on the mark. If you’ve abandoned your mark, others might have started using it. Even if the exact mark is still in the clear, if you’ve left it unused for three years, there might be new trademarks that your original mark would be infringing on if you start using it again. Conducting a clearance search can help you determine if it’s still available.
A trademark can be considered “dead” with the USPTO while still maintaining common law rights. This happens when a trademark owner doesn’t keep up with registration maintenance, but continues using the mark in commerce.
If you’re wanting to revive your registered rights, things get a little more complicated.
How do I revive a registered trademark I abandoned?
If you abandoned your registered mark, you do have options. You can file a petition with the USPTO within 60 days of receiving your Notice of Abandonment. If resolved, your trademark won’t be abandoned. If unresolved or you miss the deadline, you’ll have to submit a new trademark application in order to gain federal protections again.
The danger of re-applying for registration is you’ll have a later filing date now. (First filing date is a pillar in the fight against infringement cases, so this can affect your ability to protect your trademark.)
Additionally, other applications that might have been denied because they were too similar to your registered mark will no longer be compared to yours when the USPTO checks for conflicts. This means they might be registered before your new application is reviewed, and your mark could be denied because of likelihood of confusion. That said, you would have the option of opposing the other mark’s registration or seeking a cancellation in order to preserve your rights.
How do I revive a trademark application?
How you revive an abandoned trademark application depends on why the application was abandoned. For example, if you missed the deadline for responding to an office action, you’ll submit the Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action form.
The USPTO charges the same fee for reviving an application regardless of the reason why it was abandoned—$150 for electronically filed applications and $250 for paper filed.
Note: You might have other fees associated with your application, such as an extension request filing fee.
View the USPTO’s forms and requirements to revive to determine exactly what you need to submit.
After you file your Petition to Revive, the USTPO will review the paperwork. If your petition is:
- Granted: The USPTO will continue examining your application for registration.
- Incomplete: The USPTO will send a Deficiency Letter so you can submit whatever is missing. You’ll file a Response to Petition to Revive Deficiency Letter form.
- Denied: The USPTO will inform you of the denial, and you’ll have two months from the issue date to submit a Petition to the Director that includes new facts, a declaration under Trademark Rule 2.20 signed by the applicant or an authorized attorney, and a petition fee of $250.
