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   Author  Topic: Dead Trademark question  (Read 1281 times)
Chuck
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Dead Trademark question
« on: Jul 1st, 2007, 9:57pm »
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Hi, I am new to the forum after searching a bit and not finding an answer to my question I though I would register and ask it.  Here goes:
 
Company A has designed a line of several types of widgets and paid someone to manufacture these widgets for them.  This line of widgets all share the name of "SuperDuper" and the type of widget like "SuperDuper Bracket" or "SuperDuper Plate".  All SuperDuper widgets have the same color and a label with the SuperDuper Name on them.  Customers recognize these products by both the distinctive color and the SuperDuper name.
 
Company A registered the "SuperDuper" Word Mark (Typed Drawing?) as a trademark in 1996.  This registered Trademark now has a cancellation date in 2003 under Section 8.  It was never a National application.  The Live/Dead indicator lists the Trademark as DEAD currently.  First use is in 1992 and continues to today.
 
Company A continues to have a relationship with the manufacturer and continues to have more produced for their retail sale.  They also sell these SuperDuper widgets to other authorized businesses who sell them.  These businesses have the training to properly install the widgets and warranty ones that fail.
 
Unfortunately the manufacturer is also selling these to unauthorized businesses that in turn sell them at a steep discount and with no warranty and no guarantee of a proper installation.  This puts the authorized businesses in a bad position because a customer that brought their widget at an unauthorized company might show up at an authorized company for the part to be warrantied.  The difference in price is also an issue for the authorized companies.
 
The manufacturer is able to produce these widgets at a quality significantly higher and price significantly lower than any other manufacturer so Company A wants to continue to use them.  
 
Could Company A refile/reactivate the "SuperDuper" tradmark so that the Manufacturer would be forced to stop selling to the unauthorized businesses or to keep the unauthorized businesses from selling them?
 
If Company A did not want to refile/reactivate themselves, could one of the authorized businesses file instead to keep the manufacturer and unauthorized businesses from selling the widgets?
 
If trademark is not the way to go, how could the SuperDuper Widgets be protected so only authorized businesses be able to sell them?
 
TIA for any help or suggestions.
« Last Edit: Jul 1st, 2007, 10:08pm by Chuck » IP Logged
JSonnabend
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Re: Dead Trademark question
« Reply #1 on: Jul 2nd, 2007, 8:58am »
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An abandoned registration cannot be revived after the grace period has elapsed, so Company A would have to re-file for registration.  That doesn't mean that Company A doesn't have rights in the mark in any event -- which it does even without a registration.  Company A can seek to enforce those rights against the unauthorized manufacturer (assuming the unauthorized manufacturer is infringing Company A's mark, registered or otherwise).
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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718-832-8810
JSonnabend@SonnabendLaw.com
Chuck
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Re: Dead Trademark question
« Reply #2 on: Jul 3rd, 2007, 6:07pm »
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If Company A is unwilling/unable/disinterested in re-establishing the trademark, could one of the authorized companies register the tradmark themselves?
 
Would the new trademark owner now have any recourse or authority to keep the manufacturer from selling to unauthorized businesses?
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JSonnabend
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Re: Dead Trademark question
« Reply #3 on: Jul 5th, 2007, 7:51am »
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on Jul 3rd, 2007, 6:07pm, Chuck wrote:
If Company A is unwilling/unable/disinterested in re-establishing the trademark, could one of the authorized companies register the tradmark themselves?
 
Would the new trademark owner now have any recourse or authority to keep the manufacturer from selling to unauthorized businesses?

You haven't said anything that indicates that Company A has abandoned its trademark, only the registration of it.  You should not confuse the two.  
 
Re-read my last post and I think you'll find the answer to your second question.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
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