Hi. How can I claim an abandoned trademark? I read that I need to see if the owner is still using it for anything too.

Question

I read that I can be sued if I claim the trademark and start using it while the previous owner is still selling items under that name. I also read that I need to figure out if it was denied, and if so, why? That way I don’t run into the same problems.

Felicia Altman · Answer

To start you should look at why the mark was abandoned. Was it denied originally due to an office action and the owner let it lapse, or are they no longer using the mark. If a mark is no longer in use and abandoned you may file for an application with the USPTO for the abandoned mark in the same class of goods and services. It is best to speak to a trademark service to assist.

Tania Maria Williams · Answer

The reason why it was abandoned makes a difference.  Some people begin the trademark process and then pivot to something else.  Others abandon a mark because they received opposition to its registration.  You can contact me for a free 15-minute consult at the link below to help you determine your next steps: 
 
https://www.williamsfirmpa.com/schedule-consult

James L. Arrasmith · Answer

Here are the steps on how to claim an abandoned trademark: 
 
1. Check if the trademark is still in use. You can do this by searching the United States Patent and Trademark Office (USPTO) database. 
 
2. If the trademark is not in use, you can file an application to register it. Your application must include the following information: 
 
    * The name of the trademark 
    * The goods or services that you will use the trademark with 
    * A drawing of the trademark 
    * A statement that you have a bona fide intention to use the trademark in commerce 
 
3. The USPTO will review your application and decide whether to register the trademark. If the USPTO approves your application, you will be granted a trademark registration certificate. 
 
However, it is important to note that you cannot simply claim an abandoned trademark. You must first determine that the trademark is actually abandoned. A trademark is considered abandoned if the owner has not used it in commerce for a period of at least three years. If you are unsure whether a trademark is abandoned, you should consult with an attorney. 
 
Here are some things to consider when determining if a trademark is abandoned: 
 
*The owner has not used the trademark in commerce for a period of at least three years. 
 
*The owner has filed a trademark cancellation application with the USPTO. 
 
*The owner has assigned the trademark to another party. 
 
*The owner has filed for bankruptcy. 
 
If you determine that a trademark is abandoned, you can file an application to register it. However, you should be aware that the owner of the abandoned trademark may still challenge your application. If the owner challenges your application, you may need to go to court to defend your right to register the trademark. 
 
Here are some tips for claiming an abandoned trademark: 
 
*Do your research. Before you file an application to register an abandoned trademark, you should do your research to make sure that the trademark is actually abandoned. 
 
*Consult with an attorney. If you are unsure whether a trademark is abandoned, you should consult with an attorney. 
 
*Be prepared to defend your application. If the owner of the abandoned trademark challenges your application, you may need to go to court to defend your right to register the trademark.

Q: Hi. How can I claim an abandoned trademark? I read that I need to see if the owner is still using it for anything too.