Perhaps the United States Patent and Trademark Office (USPTO) rejected your trademark application. Or you want to use a USPTO-canceled trademark or an abandoned trademark. Can you use a trademark that has been canceled or rejected by the USPTO? While you may be able to use a canceled or rejected trademark, there may be legal risks in doing so.
Can I Use My USPTO-Rejected Trademark?
If the USPTO rejects your trademark application, you may still be able to use it, depending on the reason.
Reasons for Trademark Rejection
Common reasons the USPTO may reject your application include:
- Likelihood of Confusion—the trademark is too similar to another registered trademark and may cause confusion;
- Too Generic—you are trying to trademark a generic word or phrase such as “aspirin”;
- Primarily a Surname—your trademark primarily includes a surname; or
- Merely Descriptive—the trademark merely describes the product, such as “creamy ice cream.”
The USPTO will issue an Office Action if there is a problem. It will either reject your trademark or list problems and give you a chance to address them. If you receive a rejection, you can file a request for reconsideration, raising new issues about why your application should be granted. You can also file an appeal. The Trademark Trial and Appeal Board hears trademark refusal appeals.
If the USPTO ultimately rejects your application, you may be able to continue to use your trademark, depending on the reason. If the USPTO rejects your trademark because it is too similar to another registered trademark, you’ll risk trademark infringement. Speak with a lawyer before using a rejected trademark.
Can I Use Another Entity’s Canceled or Abandoned Trademark?
If you want to use another entity’s canceled or abandoned trademark, you should first understand the reason for the cancellation or abandonment.
A trademark owner may abandon their trademark application, but this doesn’t mean that you should try to register that same mark. For example, even though an owner abandons their USPTO application, they may still be using their trademark and have common law rights to it. If you use it, you might be accused of trademark infringement, depending on where you, and they, are located.
Owners abandon their trademark applications for a variety of reasons. They may have done so because the USPTO raised legal issues such as genericness or the likelihood of confusion with another registered mark. If this is the case, you’ll encounter the same problems if you try registering this mark.
Just because the USPTO’s website marks a trademark as “dead” or “abandoned” doesn’t mean it’s up for grabs. You should speak with a trademark lawyer before you try to register an abandoned trademark.
There are several reasons why the USPTO may cancel a trademark. You must understand the reasons that the USPTO canceled a trademark before trying to use or register that same trademark.
Reasons for cancelation may include that the registration owner failed to renew the registration, or someone has successfully petitioned for cancellation. A person or company can petition for cancellation if they believe they are being legally damaged by the registration, e.g. alleging a wrongful registration that adversely affects them, or that they have priority rights to the registration.
Use Caution with Canceled or Abandoned Trademarks
If a trademark has been canceled or abandoned, and no other similar trademark has been filed in the meantime, it may be possible to obtain registration of that trademark. However, when a party files for trademark registration, the party or its agent (generally, its attorney) has to affirm under oath that they are unaware of any conflicting uses. This awareness includes unregistered uses of the trademark. For example, if a party knows that someone else in another state is using the exact same trademark on the exact same product, it’s bad faith to attempt to register it.
If you’re seeking the broadest and maximum protection of your branding via federal trademark registration, it’s best to avoid using branding that anyone else uses anywhere. It’s best to be original! If you’re seeking only local protection for your brand, and someone else is using the same trademark in a different geographic area without federal registration, you may be able to use it and seek just state-level trademark registration. An experienced attorney can advise you on this.
Consult an Intellectual Property Attorney Before Using a Canceled or Rejected Trademark
Can you use a trademark that has been canceled or rejected? The answer depends on your specific circumstances. Consult a knowledgeable intellectual property attorney at BrewerLong about your rights and risks. We’ve helped clients with trademark registration and infringement. Contact us today.
Can You Modify an Existing Trademark?
You registered a trademark that was perhaps modern when you started your business. Times have changed, and you’d like to refresh your trademark to reflect the changing times. You wonder, can you modify an existing trademark? Will your trademark modification be legally protected? The answers depend on the specifics of the change you’d like to make to your original trademark.
Can You Modify an Existing Trademark?
Generally, you can modify an existing trademark. However, you want your trademark modification to have the same legal protections as your existing trademark, and of course, ensure the modification does not result in infringement on someone else’s trademark. If you registered your trademark with the United States Patent and Trademark Office (USPTO), depending on your change, your modification may not be as protected as your existing trademark unless you take specific steps to protect it.
Amending Your USPTO Registered Trademark
You may wonder, can you modify an existing trademark with an amendment to your registration? Under certain circumstances, the USPTO allows you to amend your registered trademark.
What is a trademark amendment that may be acceptable? Under federal law, you can amend your trademark if the change does not “ does not materially alter the character of the mark.” The modified mark must contain the “essence of the original mark.” It must also create the “same impression as the original mark.” This means that the USPTO will accept amendments so long as the modification gives the public the same impression as the original mark.
The benefit of amending your registration is that you’ll be able to keep your original filing date, and the cost is a bit less. The drawback of amending your registration is that, if approved, your modification will now be the officially registered mark. This will be sufficient for people who wish to abandon their old trademarks. But, if you want to ensure that both your old and new trademarks are equally protected, you may need to file a new application.
Amending a trademark registration requires complicated legal arguments to the USPTO. You should discuss your potential amendment with an intellectual property lawyer.
Register a New Trademark
Let’s say you’d like to modify your logo to use with a new service or product that your business provides. Or you’d like to make significant changes to the words or design of the logo or trademark. In this case, you may need to file a new trademark application with the USPTO.
Although you can remove goods and services from your registered trademark, you cannot add new goods and services to it. You’ll have to file a new USPTO application. Similarly, if you’d like to create a new version of your trademark for a new good or service you’ll provide, you’ll have to file a new trademark application.
Filing for a new trademark application requires you to search existing trademarks to make sure that your modified trademark is not too similar to another registered trademark. You also need to make sure that it is not generic and otherwise would fulfill all of the requirements of a new trademark application. An experienced intellectual property lawyer will be able to help you prepare a trademark registration application for your modified trademark.
Caution with Using an Unregistered Trademark Modification
You can use any variation of your trademark that you desire, but there are some potential risks. Let’s take the example of a registered trademark. If you use a modified version of your trademark in commerce, you’ve modified the “sphere” of other similar trademarks that would constitute infringement, even if only slightly. With a modified trademark, it’s theoretically possible for a third party to develop branding that infringes only on your modified trademark but not your registered trademark. But your remedies for infringement against the unregistered modification are more limited than your remedies for infringement against the registered trademark, because they are not the same. For the broadest protection, it’s best to be consistent in branding with your registered trademarks and register every variation you intend to use, with some exceptions that an attorney is best suited to advise on.
Hire Our Skilled Lawyers For Your Trademark Modification
Modifying your trademark and maintaining protection depends on your specific needs. An experienced intellectual property legal team can help you make the best decision for your business. BrewerLong has helped many small and medium-sized businesses with their intellectual property issues, including trademark modifications. Contact us today.
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