If A Trademark Is Cancelled or Expired, Can I Use It? | Trademark Attorney Angela Langlotz Explains

If A Trademark Is Cancelled or Expired, Can I Use It?

Assuming it's not "confusingly similar" to another mark registered or applied-for in the database, a cancelled trademark is fair game for another user.

Remember that trademarks are only acquired through use of the mark in commerce, and that to maintain "use" of the trademark, the mark must be used in conjunction with the sale or offer for sale of the goods or services listed in the trademark application. If a trademark owner ceases use of the mark, then their trademark rights lapse, and someone else can use the trademark.

Beware, though, the trademark listing at the USPTO, as it might not tell the entire story. Just because a trademark owner has neglected to renew the trademark, doesn't mean he or she might not still be using the trademark. These renewal deadlines are sometimes missed. So you really need ot see if the owner might still be using it, irrespective of what the trademark database indicates.

It might also not be available if during the pendency of the trademark registration lapsing and the date you did your search, someone else might have a applied for something similar, and so the trademark registration might have expired,
but the registration of a subsequent mark might nonetheless make the trademark unavailable for a new user.

Bottom line: You have to check the record.

transcript
If a trademark registration has lapsed, can I use it? A viewer messaged me and he asked, “If a trademark is dead or canceled and a company hasn't used it within 10 or more years, is it safe to register it for my company?” So you go into the trademark database, you see the mark that you want to file and you go to look at it and it's dead. It's dead. Now perhaps you think that perhaps you can use it.

Well, not so fast. You might not be able to use it. We need to do a little bit more digging. Now, remember that trademark rights are acquired through use, not just registration. You have to keep using the mark in order to maintain your trademark rights. If you don't use the mark, then your trademark rights can be lost irrespective of your registration status. So we have to very carefully look at this.

So just because somebody had their trademark lapse — and it can lapse for a number of reasons — it could have been canceled for non renewal. It can be canceled because somebody else filed a cancellation proceeding against that trademark. It can be canceled because somebody went in and said, we are abandoning this trademark. So we have to look at the record and see exactly what happened. If it's canceled because somebody else filed a cancellation proceeding, then we probably want to investigate whether the people that filed the cancellation proceeding are still using the trademark that they were using when they filed the trademark cancellation proceeding, because that mark that they were using was probably the reason why they had the trademark registration in question canceled.

Another issue is that the registrant might still be using the mark, and forgot to renew it. It also might be that a mark was cancelled, but then a subsequent applicant may have come in between the time the trademark registration lapsed and the time that you looked at the record and got all excited. There may have been someone else come in and register a mark that now would be considered confusingly similar to the mark that you're proposing to use. So the bottom line is you really need to look at the record and consider all of the possibilities when you are looking at using any mark, not just an abandoned mark,

Another possibility: If a registrant hasn't used a trademark for a number of years, and you don't have what we call excusable nonuse, then the trademark rights would lapse. There may still be a trademark registration, but somebody could come in and petition to cancel your mark for nonuse. So if you don't use your trademark, the bottom line is you're likely to use to lose it either because you can't renew because you're no longer using the mark or because somebody else sees that you're no longer using it and files a cancellation proceeding. So either of those things are possible. And there's always the wild card of some intervening filing going on that may also affect your ability to use that trademark that's been canceled. You need to look carefully at the record before you adopt a trademark that has been abandoned.

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