Re: Expired trademarks/what constitutes "use in trade"

Subject: Re: Re: Expired trademarks/what constitutes "use in trade"

Comments:
: : I'm trying to understand the way abandoned trademarks are handled with respect to professional sports teams. : : For example, there was once a team called the Springfield Indians in the AHL. The team was sold and moved to Worcester. For a year or two afterwards, the former owner produced and sold jerseys with the old Indians logo on it; he still used the mark in trade. : : However, it has been several years since the prior owner has traded anything under this mark. : : It is my understanding that the mark must be actively used in trade in order to be retained (otherwise we'd have "trademark squatters" sitting on every potential mark). But what constitutes "use"? : : Is this statute loose enough so that sending a postcard with the name/logo on it to the USPTO is enough to satisfy the requirements? : : From what I gathered on this forum, it seems as though in order to lay claim to the mark, it would have to be challenged -- a petition to cancel would need to be filed. Is this a process that is winnable? Or does the above "postcard method" get around the "use" requirement easily enough so that it's just not feasible to try? : : If a hockey team wanted to form in Springfield with the name "Springfield Indians", could the former owner (who still has a live registration with USPTO but is not using it in trade) step in and claim that the mark is his, even though he has not used it in trade for 5 years? Is there a time window that must pass before the mark is generally considered "dead"? : : Also, in a similar vein, if there was a logo design done in the 60's for the Indians, and the mark was successfully cancelled or was abandoned, could someone not affiliated with the prior mark holder produce replica products (jerseys) with that logo? : : Thanks for the help! : : Ralph Slate : Dear Mr. Slate, : As you can see by what you have had to write this is a many faceted complex situation possibilty involving trademake, copyright and contract law. : M. Arthur Auslander : Auslander & Thomas-Intellectual Property Law Since 1909 : 505 Eighth Avenue, New York, NY 10018 : 212-594-6900, fax 212-244-0028, aus@auslander.com : ELAINE's Workshop (sm) : E arly L egal A dvice I s N ot E xpensive

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