Portland, OR asked in Trademark for Oregon

Q: if a trademark has been abandoned or canceled can you print clothing with it on without getting in legal trouble

specifially the grateful dead dancing bear graphic

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2 Lawyer Answers
Fritz-Howard Raymond Clapp
Fritz-Howard Raymond Clapp
Answered
  • Trademarks Lawyer
  • Beverly Hills, CA

A: If a trademark registration has been cancelled, or if an application to register a trademark has been abandoned, that does not necessarily mean the trademark is no longer in use by its owner.

If the mark is still being used by its owner, but lacks a federal registration, your use for similar goods or services can be infringing. Infringement of a trademark that is not federally registered may still be the subject of a lawsuit in state court under either state law or common law.

Jim Boness agrees with this answer

Jim Boness
Jim Boness PRO label
Answered
  • Trademarks Lawyer
  • Portland, OR
  • Licensed in Oregon

A: I agree with my colleague's previous answer and would just add for some background that one obtains trademark rights through use of a mark on goods or services. Registration of a mark is not required for protection but is most definitely helpful. It puts others' on notice that the mark is being used, it confers upon the owner of the mark special benefits including being able to file suit in a federal court, conclusive proof as to the right to use the mark on the registered goods and services and the ability to obtain statutory damages. which negates the need to show actual damages.

In addition, even if a mark is not registered federally, it may still be registered under a state registration. Check your state's database for that information. Finally, as already stated, even if not registered, a mark nonetheless can be protected by trademark law and an infringer of that mark could face consequences for the unauthorized use of it.

More investigation as to the status of a mark and your proposed use of it would be wise. There may still be other options for you. If the mark is still being used, perhaps a license of the mark might work. In any case, consultation with an attorney well-versed in trademark law would be the safest route to go for you.

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