An abandoned trademark is not same as an abandoned trademark application you may come across when performing a trademark check using the Trademark Electronic Search System (TESS). The difference between the two is extremely important in determining whether your use of a particular mark is in violation of someone else’s trademark rights. Although people (including attorneys) frequently use the phrase “abandoned trademark” to refer to an abandoned trademark application, such use is improper, imprecise, and can mislead others into believing that a trademark is available for use and registration when it is not.
A dead trademark in the USPTO means that the trademark application or registration is no longer active. A trademark check using the free Trademark Electronic Search System (TESS) can easily reveal hundreds (if not thousands) of dead trademarks, many of which might have been dead for years or even decades. But why would a trademark be dead? In other words, what leads to a trademark application or registration becoming inactive?
A trademark that falsely suggests a connection with individuals (living or dead), institutions, beliefs, or national symbols is ineligible for registration with the United States Patent and Trademark Office (USPTO). The Lanham Act (which is the federal law that governs trademark registration in the U.S.) requires the USPTO to refuse registration of a trademark if it concludes that a false suggestion of a connection exists. Unlike other types of rejections (such as merely descriptive and surname refusals), a showing of acquired distinctiveness cannot overcome a false suggestion of a connection refusal under any circumstances.
The discovery conference is the first thing the parties must do in a trademark cancellation after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties talk about particular matters concerning the cancellation before the discovery period opens. The parties are permitted to conduct the discovery conference in-person, but it’s typically done over the telephone for the sake of convenience. Although the TTAB doesn’t usually participate in the discovery conference, either party may ask that a TTAB interlocutory attorney assist in scheduling and guiding the conference. This could be especially helpful if at least one of the parties has not retained an attorney.
A collective trademark is similar in some ways to a traditional trademark and is afforded the same protection from infringement and misappropriation under the law. Although they are far rarer than traditional trademarks, collective trademarks still play an important role in the marketplace and convey information to consumers that could affect their purchasing decisions and whether to do business with one product/service provider over another.