How can I claim the right to use a similar band name that was previously trademarked?

Question

The name we had intended to use populates under USPTO search but is marked as dead and expired, and is not currently in the process of being renewed . Their usage is the singular case of the word while our usage is plural (we add an "s" to the end of the word). They aren't actively performing or marketing as found through research and we would like to claim rights toward usage of the name. They are also not based in the United States but received a trademark through their management some years ago.

Sean Goodwin · Answer

File a trademark application with the USPTO.  
Please note: the fees are non-refundable. I highly recommend using a competent trademark attorney to run a clearance search first to ensure that the mark you want to use is actually available. For example, there is a way for recently abandoned trademarks to be resurrected with the correct fees and documents. In addition, the USPTO's examination process has slowed down considerably, and you will not hear from an examiner for approximately 9 months from the date of filing. Better to be safe than sorry.

Felicia Altman · Answer

In order to claim rights to a prior trademark you must file a trademark application with the USPTO. If the mark is abandoned and it cannot be renewed or revived then you can file a trademark application for the same or similar mark in the same class of services. I recommend using a Trademark Attorney to review the prior mark and conduct a quick search if the mark is still available through the USPTO.

James L. Arrasmith · Answer

While you can potentially use a similar band name, you should be aware that even expired trademarks can retain some common law rights if the original band built up recognition and goodwill. Adding an "s" might not be enough differentiation to avoid legal issues, as similarity in sound and appearance can still lead to consumer confusion. 
 
Your best approach would be to file your own trademark application for the plural version of the name. However, before doing this, you should work with a qualified trademark attorney who can conduct a thorough search and analysis of potential conflicts. They can help determine if the expired trademark holder might have grounds to oppose your registration or claim continued rights through actual use. 
 
The fact that the original band is inactive and based outside the U.S. works in your favor, but doesn't guarantee protection from future disputes. Consider reaching out to the previous trademark holders to secure their written permission or negotiate an agreement. If you proceed without permission, document your good faith efforts to verify the name was truly abandoned and maintain records of your own continuous use of the name. Remember that spending time and money to properly secure rights now can prevent much costlier legal battles later.

Q: How can I claim the right to use a similar band name that was previously trademarked?