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[48rules]

Hello everyone. Did a couple of searches but couldn't find an answer so forgive me if I'm repeating someone else.

At what point is someone free to use a name previously used?


Thanks!

[Spielman]

The short answer, as is the often the case, is that it all depends. The trademark statute states as follows:
A mark shall be deemed to be "abandoned" if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
15 U.S.C. § 1127

Therefore, it often has much to do with the intent of the party. As many of the other attonreys who post on here can tell you, proving intent , or lack of intent, will cost signifcant time and money in court. This may be a rhetorical question, but how sure are you that they have no sales, since their cease and desist letter stated your use would interrupt thier sales? You should consider consulting a trademark attorney before launching your business.


Darren Spielman
www.ComplexIP.com

[JSonnabend]

Darren is right.  Proving abandonment is very difficult because it requires you to "get into the head" of the former mark owner.  When the time period for non-use is less than the three years of the statute, it's very difficult indeed.

- Jeff

[48rules]

Thanks for the replies!

I hope the details below help more accurately paint the picture.

I know they have no sales because:

**EDITED FOR PRIVACY**

I know I should point these things out to my attorney, but don't want to waste the $600hr until I know exactly what to say.

Thanks for your thoughts/opinions!

[JSonnabend]

Talk to an attorney directly.  Do not post any identifiable specifics here.

- Jeff

[Kaitlin]

Jeff and Spielman are quite correct about the difficulty of showing abandonment.  Even if you had more than three years of non-use, that presumption is rebuttable.  And how much evidence you would need to refute their rebuttal may vary, depending on your jurisdiction.  (And note that the 3-year presumption is under Federal law.  Your action under state law may or may not look to that standard.)  The evidence you have from your discussions may or may not be sufficient to show the requisite intent, particularly with only two years of non-use.

The likelihood of success in a case like yours will involve a complex diagnosis and any prediction of your chances of coming out on top would best be done by a trademark attorney who knows all the details of your facts and who's had a lot of litigation background on which to base his/her opinion.  If you think you've got a good case and plan to proceed, get thee to an attorney ASAP.

I know I should point these things out to my attorney, but don't want to waste the $600hr until I know exactly what to say.

You should be able to find a good trademark attorney for much less than that.  Try some IP boutiques, do some comparison shopping.  Ask up front about their hourly rates and policies.  Ask how many cases like this they've handled (involving abandonment with such little time involved) and what success they've had.  And if you want to bone up on the issues before hand, now that you know to use the terms "abandon" and "abandonment" rather than "expiration", you may get some better hits.

If you have the bucks to risk on the highly likely prospect of defending a lawsuit (even if it turns out you'd be likely to win), it would be much wiser to start out with good advice on how to proceed up front -- and avoid a higher legal bill down the road if you end up in court.


And I'll repeat Jeff's warning: DO be VERY CAREFUL about what facts you disclose in a public forum.  If you eventually come to litigation, anything you post which goes AGAINST your interests can be used as evidence by the other side as an "admission against interest", if the other party sees it and figures out who you are.   Also, any information, including legal theories or opinions about your situation, put out in public like this don't fall under the attorney-client privilege. 

[JSonnabend]

$600/hr?  There's no need for such an expensive attorney.  I handle matters for individuals and small businesses, and my billing practices and rates reflect that.  My colleagues are the same.

- Jeff

[48rules]

Thanks so much for your opinions on the matter!

I've been able to clear up a few issues on my own but for the stickier ones I will definitely find competent counsel. For less than $600hr it seems 

Too keep from saying anything further I'll just end my post now.


Thanks!

[dwight]

I am confused regarding the expiration.  Some comments talk about prior use for three years and another area referrs to the need to apply for the continuance with a section 8 document.

I licensed a trademark from a company that just wen tout of business - closed his doors and the president of the company is in serious legal trouble.

Question 1 - I realized he applied in jan 2003 and there was a supplemental application in Jan 2004 and acceptance on March 2004.   Has he failed to renew his registration and I can acquire it for my own?

Question 2 - if my license is for 20 years does this have any impact?  It is not an exclusive, be he went out of business the following day.

[Kaitlin]

This thread addressed the OP's concern without fully straightening out his misuse of language, which may be a factor in your confusion.  The OP was asking about common law  (unregistered) trademarks and wanted to know when they "expired." 
What we answered about was "abandonment".  Properly speaking, trademarks do not "expire."  Like old generals, they never die  -- but they can and do fade away -- that is, they can be abandoned.

Just as a person may be presumed dead after going missing for so many years, a trademark is presumed to be abandoned when not in use for a sufficient period of time.  For Federally registered marks, three years is the magic number after which the mark is "presumed" dead.  But that presumption can be refuted by the trademark owners showing they were just retooling or had other legitimate reason for not using it in the interim.

A trademark registration, on the other hand, is another matter.  A registration may expire.  The proprietary rights in the mark can and very well may continue even if the registration expires--provided the mark has not in fact been abandoned, and provided it continues to be used appropriately.  But the protections that go with the registration will be lost.

It is in relation to the REGISTRATION where the section 8 issue comes in.  Periodically you have to affirmatively show that you haven't abandoned your mark to keep your registration alive. 
(You might find this newsletter article on trademark (registration) renewals informative:
http://www.invention-protection.com/ip/publications/docs/Trademark_Renewals.html  )

As for your rights as a licensee....
It's been a long time since I dealt with the issue of a licensee acting for the licensor, but I do know that in certain situations this may be done if you are an exclusive licensee.  Speak with a trademark attorney about your options -- preferably one who's also familiar with IP issues in bankruptcy as well as licensing.