2017-10-04
Many entrepreneurs look to utilize unique branding for their businesses. Whether it is a name, logo or phrase, it may become a source identifier for your products and services. The potential of accumulating goodwill and market share that comes from client identification makes branding an important consideration for any business. An important factor to consider when creating your brand is protecting it through trademark registration. Now, say for example you are the brand Nike. You wouldn’t want your competitors to use your brand name or the popular phrase – Just Do It. Trademarks are valuable assets that represent your brand and registration offers these marks protection.
Choosing the right trademark can be difficult. Choosing unique trademarks can be difficult due to the large numbers of companies and trademarks created on an annual basis. At times, businesses come up with a mark that perfectly matches a zombie trademark. A zombie trademark is nothing more than an existing mark that is dead or abandoned.
In such cases a question arises – Can you use and register zombie or dead trademarks? The answer is yes. Read on to find out how.
Zombie Trademark – How You Can Bring Them Back to Life
Zombie or dead trademarks are marks that are abandoned either during the application process or because of non-use. Trademarks can exist for as long as they are in use. For example, the trademark Apple and Nike will exist for as long as they are in commercial use. But, a mark may be abandoned for a variety of reasons. If a trademark is in the midst of the registration process and the mark owner fails to respond to an office action, the mark can be abandoned. Furthermore, a trademark is considered dead if the owner stops using it and shows no intention of re-using it.
If you find a mark that matches a zombie trademark, you may be able to use and register it. Dead trademarks can be brought back to life given certain conditions are met. Whether or not a trademark has been abandoned during the registration process, not renewed or is no longer in use, research should be completed to determine whether or not utilizing the trademark is in your best interest and whether or not you have the right to use it.
When a trademark owner does not use a mark for three years and shows no intention of reusing it, it can be removed from the trademarks register. Once expunged from the register, the mark is deemed dead. In order to expunge the trademark from the register, an interested party must make a request for expungement and pay a fee. It is generally considered wise to complete some research to determine the length of time of non-use before requesting expungement. Once expungement proceedings are initiated, the trademark owner must provide evidence of use within the last three years or provide exceptional circumstances as to why they haven't used the trademark. If the owner provides satisfactory evidence of non-use and shows an intent to resume use, then you may lose the opportunity to register and use the trademark.
It is important to understand the reasons for non-use or abandonment prior to resurrecting a trademark. The reasons for the abandonment of a trademark application or registration could have a negative impact on the mark as a viable option for your business.
There are common law rights that must also be considered when considering the use of a dead or abandoned trademark. Just like non-use does not equal abandonment, abandonment does not mean the trademark is wiped from public memory. If a trademark still has some source identifying power, you could struggle to obtain ownership rights. Since the core of the trademark is confusion, even a small amount of goodwill retained by the trademark could prove to be problematic. Considering this, age-old dead trademarks may be easier to obtain than the new ones.
Picking a zombie trademark is not as easy as it seems given the possibility of opposition, infringement litigation, and the complexity of law. Along with considering the above-mentioned factors, consider consulting a trademark agent to assist you in making an informed choice.
