Trademarks are source identifiers for a business. They enhance the value and marketing strategy of a business. A trademark can be a brand, logo, character, slogan, tagline, scent/smell, sound or color. Common law rights in a trademark are established by use. But in order to enforce your rights and to have a strong consumer recognition, businesses register their marks as a trademark.
Trademark rights can last forever if they are properly and consistently used and are renewed periodically with the United States Patent and Trademark Office (USPTO).
Maintenance and Renewal
Once a trademark is registered, the trademark owner needs to file maintenance documents before the end of the 6th year from the date of registration. Thereafter, a the trademark registration will need to be renewed every 10th year from the date of registration. While filing maintenance/renewal, the trademark owner needs to show current use of the trademark. If you miss the maintenance/renewal deadlines, the USPTO gives you a 6 month grace period within which you can make the filing. Failure to file within the grace period leads to cancellation of the mark by the USPTO.
Trademark rights can expire if they are abandoned. This means that the trademark owner stops using the trademark for a continuous period of 3 years or more without the intent to resume use. If a trademark owner fails to fulfill the post registration requirements as outlined above, the USPTO considers the trademark abandoned and will eventually cancel the registration.
However, failure to file post registration documents can be inadvertent and due to an oversight. If the trademark owner has continued to use the trademark during the time that the trademark was cancelled by the USPTO, the owner can still show common law use and prevail over a subsequent filer for the same mark.
This was best highlighted in the case of Crash Dummy Movie v. Mattel. Mattel owned a trademark registration for CRASH DUMMIES for toys. In 2000, the USPTO cancelled Mattel’s trademark for failure to file a renewal. In 2003, Crash Dummy Movie filed an intent-to-use trademark application for CRASH DUMMIES for games. Mattel filed an opposition against Crash Dummy Movie’s trademark application based on its common law rights in CRASH DUMMIES.
Mattel was able to show evidence of its consistent use of the CRASH DUMMIES mark from 1995 to 2000 (the date that the registration was cancelled). The court stated that “Although Mattel later allowed its trademark registrations to lapse, cancellation of a trademark registration does not necessarily translate into abandonment of common law trademark rights.” A trademark is considered abandoned if its use has been discontinued with no intent to resume use.
Determining the trademark owner’s intent is often not easy. So grabbing up a seemingly dead trademark on the USPTO will probably be risky if the trademark owner has not abandoned all of its trademark rights.
At Nupur Shah Law, we help entrepreneurs protect their business. Call us at 646-820- 1366 or email us at firstname.lastname@example.org. I am happy to have a complimentary conversation with you on how to secure and/or defend your rights.