There are two options for trademark registration available to Florida residents – it is possible to register at the state level with the Department of State or apply for a federal trademark with the United States Patent and Trademark Office (USPTO).
In this article, you will find out whether you can use a dead trademark in Florida.
Registering a Trademark with USPTO – The BasicsĀ
Federal trademarks enjoy extended protection compared to unregistered marks or marks registered only at the state level.Ā Ā
Before applying for trademark registration, the owner of a business mark must proceed with a thorough search in USPTO’s database, which lists all trademarks registered, pending, or dead in the agency’s system.
The purpose of USPTO’s trademark system is to catalog all registered marks being used in commerce across different states. Hence, applicants must search the database to identify whether an existing mark is too similar or identical to their marks.
Currently, the USPTO is working to expand the availability of marks for new applicants and cancel registrations associated with dead trademarks.
Live Trademarks vs. Dead Trademarks – An ExplanationĀ Ā
If a trademark is actively registered or pending with the USPTO, it is referred to as a “live” trademark. When searching USPTO’s database, applicants must pay attention to this type of mark, especially those going through examination.
US law specifies that trademarks cannot be confusingly similar or lead consumers to confuse the source of goods and services. During the examination, USPTO will identify the existence of likelihood of confusion between an existing mark and the applicant’s mark.
The bar used to determine whether a mark can be registered with USPTO is high, which means not paying attention to these elements may result in rejection.
The term “dead trademark” is used to refer to marks that were abandoned or have been canceled. Several reasons may result in trademark cancellation. For instance, USPTO requires the payment of a maintenance fee for registered trademarks.
If the owner of a federal trademark fails to pay the maintenance fee, the registration may be canceled and the mark will be considered “dead.”
How Can You Use a Dead Trademark in Florida? – In DetailĀ Ā
A trademark is not necessarily available to use simply because it is deemed “dead” at USPTO. While a dead trademark is no longer registered, the applicant must be careful when registering similar or identical marks.
The best approach is to consult with an experienced legal advisor to double-check the dead mark’s history. During the assessment, it is crucial to identify how a particular mark has gone dead and which reasons led to its abandonment or cancellation.
The most common reasons that result in the cancelation or abandonment of trademarks include:
- Constantly defaulting the payment of maintenance fees
- Not using the trademark associated with goods or services in commerce
- Failing to respond to an Office Action (official letter from USPTO)
Please note that trademark rights come from actual use in business. If the owner of a mark considered dead by USPTO is actively using the mark in business, it is not available for use.Ā Ā
In such cases, obtaining a federal trademark registration may not be sufficient to avoid disputes, as the owner of the mark may seek court intervention to asset the prior use of a common law trademark.Ā
Protect Your Trademark Rights – Immediately Contact Jurado & Associates, P.A.Ā
Avoid costly mistakes – contact a well-versed attorney from Jurado & Associates, P.A. by calling (305) 921-0976 or emailing [email protected] to schedule a consultation.Ā
