Can I use a dead trademark?

Understanding the Risks and Limitations

Oftentimes, potential clients will reach out explaining they have launched a new brand, and after conducting a trademark search, found a conflict that is indicated as “dead”. The potential clients assume if a trademark is dead they have the green light to proceed with obtaining the trademark rights for the brand name. While that can be true, it’s typically not that straightforward.

Trademarks are essential tools for businesses to protect their brand identity, products, and services from unauthorized use by competitors. However, trademarks don't last forever. Over time, some trademarks become "dead" due to various reasons, leading many individuals and businesses to wonder if they can use these trademarks without facing legal consequences. In this article, we will explore the concept of dead trademarks, the risks associated with using them, and the limitations you should be aware of.

What is a Dead Trademark?

A dead trademark refers to a registered trademark that is no longer active or enforceable. Trademarks can become dead for a variety of reasons, including non-renewal, abandonment by the owner, or a successful challenge by a third party. When a trademark is declared dead, it loses its legal protections under trademark law.

It is essential to note that even though a trademark is dead, it doesn't mean it loses all its historical significance or brand value. Dead trademarks may still hold sentimental or historical importance, making them attractive for nostalgic purposes.

The Risks of Using a Dead Trademark

Using a dead trademark may seem like a tempting opportunity, especially if it was once associated with a successful brand or product. However, doing so carries significant risks, as you could potentially face legal repercussions. Here are some of the key risks associated with using a dead trademark:

1. Common Law Trademark Rights: In some cases, even after a trademark is declared dead, the original owner may still have common law rights in the mark. This means they could have unregistered trademark rights based on prior use in specific geographic areas. Using the dead trademark could infringe on these common law rights and lead to legal action.

2. Trademark Revival: While a trademark may have been declared dead, there might be circumstances under which the original owner could revive it. This could happen if the trademark was unintentionally abandoned, and the owner can demonstrate a legitimate reason for the lapse in maintenance. If the trademark is revived, your use could be deemed infringing, and you could be forced to stop using it.

3. Confusion and Misrepresentation: If you use a dead trademark, it could create confusion among consumers who associate the mark with the original owner's goods or services. This could harm your reputation and lead to potential lawsuits for misrepresentation or passing off.

4. Trademark Trolling: Some unscrupulous individuals may deliberately register dead trademarks to lure unsuspecting businesses into using them. They then threaten legal action for trademark infringement, seeking financial settlements from the unwitting users.

5. Loss of Investment: If you invest significant resources into a business built around a dead trademark and later face legal challenges, you risk losing your investment, time, and effort.

The Limitations of Using Dead Trademarks

Despite the risks involved, there are some situations where using a dead trademark might be acceptable. However, it's crucial to understand the limitations:

1. Historical or Nostalgic Use: Using a dead trademark for historical or nostalgic purposes, such as in art, literature, or historical references, may be considered fair use. This use is generally protected under intellectual property laws as it serves a non-commercial and creative purpose.

2. Generic Terms: If a once-registered trademark has become a generic term due to widespread use, it may lose its trademark protection. In such cases, using the term to describe a product or service is permissible.

3. Completely Inactive Trademarks: If a dead trademark is entirely inactive and its original owner has no intention of reviving or enforcing it, using it might have fewer risks. However, it is still essential to research thoroughly and consult legal counsel before proceeding.

Conclusion

Using a dead trademark may appear to be a cost-effective and strategic move, but it comes with significant legal risks and potential consequences. To avoid legal disputes and safeguard your business, it is crucial to conduct thorough research, seek legal advice if needed, and understand the potential implications of using any trademark, dead or alive. Respect for intellectual property rights not only protects businesses but also fosters a fair and competitive marketplace in the long run.

If you have questions regarding a dead trademark, please contact us here.