San Diego, CA asked in Intellectual Property for California

Q: If a servicemark is never registered and later abandoned, can I use it and register it?

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2 Lawyer Answers
Judi Smith
Judi Smith
Answered

A: For clarification, I am assuming your use of "registered" means federally registered, versus state registration. However, the answer to your question would depend on a number of factors. For example, just because a mark isn't registered, doesn't mean that its not protected. So one question would be whether the mark is in use even though it is not registered. If the mark is being used somewhere, another question would be where are you planning to use the mark. The analysis of the availability of a mark is a nuanced question with many facets to consider.

Joseph Giovanni Chu
Joseph Giovanni Chu
Answered
  • Irvine , CA
  • Licensed in California

A: There is no simple answer to your question without more facts. The answer to your question depends on a number of issues, including what you mean by "abandoned," whether you are using the mark for the same goods or services, whether you are talking about a U.S. mark or a mark in another country, etc. For example, the European Union may allow you to register a mark that has not been in use for 5 years, if you can prove the facts. You must also be aware that sometimes an owner of a mark may maintain its rights in some countries, but not in others.

If you are talking about a U.S. servicemark or trademark, in general, the key to a mark ownership is actual use. For example, a party may apply for a U.S. federal mark registration, later decides to "abandon" the application before the mark is ever registered, yet continues to actually use the mark in the market. In this instance, assuming you want to use the same mark for the same services, the mark is not yet abandoned.

However, it is possible to use a mark that is no longer in actual use. For example, Procter & Gamble once owned the WHITE CLOUD mark for bathroom tissue. It also owned the mark CHARMIN for the same goods. Later, P&G decided to discontinue using the WHITE CLOUD mark. Another business began using the mark and concluded a licensing deal with Wal-Mart, so that WHITE CLOUD tissue is now sold exclusively in Wal-Mart stores.

You should contact an experienced trademark attorney before you decide to use an abandoned mark.

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