Q: I want to trademark a name that is considered “abandoned” and “dead” on TESS. What steps should I take?

A: A trademark might still be in use under "common law" even if the associate federal registration has been abandoned and listed as dead. It's even possible that the registration was unintentionally abandoned and if not too much time has passed, the owner could petition to revive the registration. The point is: just because there is no federal registration doesn't mean that a mark is "free to use."

As to the difference in trademark "categories" (i.e., classes of good/services), the marks and their underlying goods/services are only 2 of a dozen or so factors used to assess likelihood of confusion between marks. A trademark attorney can explain how a mark might potentially conflict with another similar mark even if the underlying goods/services are different.

A trademark attorney can assess your intended mark, the abandoned registration, and other specific facts, and advise what next best steps might be.

A: In order to ensure that the trademark is available you’ll need to perform a clearance search which includes the trademarks in your same class of goods / services as well as other classes of goods / services that may overlap with what you plan to sell. In addition to the federal trademark database, trademarks need to also be cleared on the state and local level. If you need any more help please feel free to email me at benjamin@korraylaw.com. Thank you.

A: Trademarks that are listed as "abandoned" or "dead" do not necessarily mean that the trademark is not in use by the original trademark applicant/registrant. Before using a trademark, it is important to determine whether the trademark (or a similar trademark) is currently in use for the same or related class of goods or services to avoid a refusal to register due to likelihood of confusion and/or claims of infringement. Work with a trademark attorney to assist you.