IP Tech Knowledgy

Don’t be scared of ghosts when evaluating availability of a trademark.  Look closely at the activities of a registrant that seems to be blocking your mark.  Understand if and how that registrant is actually using the mark.  Sometimes that mark may not pose a problem.  

It is always prudent to determine the availability of a trademark before starting to use the brand.  Proper searches often include both looking online generally and reviewing the registrations listed in the online database of the US Patent and Trademark Office (USPTO).  The mere existence of a seemingly blocking registration does not tell the whole story. 

Find the registrant online and determine if it may be out of business and no longer using the mark.  If the registration lists many offerings, look closely to verify that the registrant is still using the mark for the goods or services you intend to offer.  If the blocking mark is a logo, check if the registrant changed its logo from what is registered.   In each of these scenarios, the trademark registrations can be cancelled due to nonuse.  

Or, “play the clock.” Determine whether the blocking registration will lapse soon.  Registrations last for ten years.  If the blocking trademark was registered a while ago, perhaps it is no longer in use.  Because it takes time for applications to progress through the USPTO, consider when a no-longer-used registration might expire and file an application ahead of that time so your application is far along in the examination process once the blocking registration lapses.  

A corollary to all of this is that a mark that once blocked your application may, a few years later, no longer be a problem.  Because entities stop using their mark, even if you previously decided not to file an application -- or your prior application was denied -- because of an earlier registered mark, check the blocking registration every few years or so.  It may be that a mark that derailed your progress previously has been cancelled due to nonuse, and is no longer blocking.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com