Legal Question in Intellectual Property in California
Trademark non use
I found a trademark I'm interested in registering, but another company has it. However, they haven't been using it for 6 years -- is there something I can do about that? The trademark is still alive, but the company was bought-out and they're not offering services that uses that trademark name any longer.
I can tell they haven't used the mark is because this is an internet-based business. Checked PR, news, etc on this TM. Plus, the TM isn't on their site anymore.
I'm aware of the need for registration owners to file affidavits of use at the 6th and 10th year anniversaries of trademark registration, and at every succeeding 10th year registration anniversary thereafter in conjunction with an affidavit requesting renewal under Section 9, and that if those affidavits are not filed, the PTO will eventually mark the registration as cancelled.
And that a 6 month grace period to file following the original use/renewal filing deadline is also granted, and that the PTO often waits an additional 6 months (for a total of a full year after the use/renewal deadlines) to make sure that the registration has truly been abandoned before listing it as cancelled under Section 8.
5 Answers from Attorneys
Re: Trademark non use
I have read the opinions of Mr. Stone, Mr.Nance, Mr.Whipple and Mr. Kinder carefully.
In this matter I shall assure you that though your matter is complicated but there is the way to solve this problem.
If you interested you can contact me at E-mail: [email protected]
Re: Trademark non use
It's commendable that you've done so much homework on trademark law, but there's no substitute for hiring a lawyer who holds himself or herself out as an expert or specialist in the field. The field of trademark law is so complicated and full of minefields that most lawyers (like me) would never attempt it.
Re: Trademark non use
Mr. Stone makes a good point. Let us know if you want a legal opinion regarding this mark or a related matter.
Re: Trademark non use
Whether or not the USPTO is slow, you simply cannot register a mark that is currently a "live" registration. You have the option of asking to buy the mark or waiting for it officially to expire. The trouble with the former is that if the owner senses interest, it may take steps to renew, and the trouble with the latter is that you may have to wait much longer than you would like.
Re: Trademark non use
I am a trademark attorney who speciailizes in this area of the law.
There is a mechanism for seeking cancellation of a trademark registration for non-use, however, it is repleat with danger. Although it sounds as if you have already conducted a fairly thorough investigation, you would want to be certain before launching an attack based upon non-use. There are third party vendors such as Thomson Compumark who conduct investigations for a fairly reasonable fee. Regardless, however, you will want to carefully evaluate any results you receive before launching a cancellation proceeding.
As an alternative, there are numerous ways of amicably resolving such matters, including license, assignment, co-existence agreements and the like. Sometimes filing a cancellation action and the threat of success could be enough to persuade the other side to negotiate with you.
In any event, the law of trademarks is very complex and factually outcome determinative. You should be cautious in undertaking any action unless you know all of the facts and every situation is different.
If I can be of any assistance, please do not hesitate to contact me.
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