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[Pinter]

I'm working with a group of writers who were once published by a company, let's call it "Zebra."

They are interested in starting a new company to publish their new work, and calling it by the same name, "Zebra."

The original Zebra was purchased by "Anteater" (not their real name, of course) about 15 years ago. Anteater did not use the Zebra name, although it continued publishing their books and merchandise under the new Anteater name.

The trademark for Zebra was allowed to expire in 2003, and they have not made any use of it since. All registered trademarks for Zebra are listed as DEAD in TESS.

Would we be able to register Zebra again as a trademark, for the same purpose it had originally existed? None of us have any business connection to the old company, nor will we be publishing any of the old titles.

[BobRoberts]

Trademark rights are created and maintained by use of the mark in commerce.  If a company fails to use a mark in commerce, then they (may) have abandoned it. I would guess that their non-use would need to be 3-4 years minimum (unless they've expressly abandoned the mark), but perhaps someone else could confirm this.  I would not go strictly by their status in the TESS system to determine abandonment either.  IF still in use (but not renewed), they still may have common law rights to the mark.

And, even if anteater has been considered to have abandoned 'Zebra' (and the mark was not further transferred and used by another assignee or licensee, if other marks not identical but for which zebra would be confusingly similar have cropped-up, then you still may be prohibited from using the mark 'zebra' due to the other marks.

[Pinter]

Trademark rights are created and maintained by use of the mark in commerce.  If a company fails to use a mark in commerce, then they (may) have abandoned it. I would guess that their non-use would need to be 3-4 years minimum (unless they've expressly abandoned the mark), but perhaps someone else could confirm this.  I would not go strictly by their status in the TESS system to determine abandonment either.  IF still in use (but not renewed), they still may have common law rights to the mark.

And, even if anteater has been considered to have abandoned 'Zebra' (and the mark was not further transferred and used by another assignee or licensee, if other marks not identical but for which zebra would be confusingly similar have cropped-up, then you still may be prohibited from using the mark 'zebra' due to the other marks.

Thanks for the reply.

This is in an industry I'm intimately familiar with / involved in, so I can provide answers to the issues you raise.

Anteater has not used the Zebra name in any way since they absorbed the company in the 1990s. They still publish new editions of works from the old days, but under the new Anteater imprint.

There are no other companies in this industry using a name similar to Zebra.

[BobRoberts]

"There are no other companies in this industry using a name similar to Zebra."

If there are no other companies that are currently using a name that 'Zebra' would be confusingly similar to, then you should be OK.  So long as Anteater (or the prior owner of 'Zebra' mark abandoned it).  Determing whether the mark 'Zebra' is confusingly similar to an existing/currently-used mark may not be as simple as it sounds.  Depending on the Court Circuit that you live in, 'confusingly similar' determinations involve, probably 7 to 11 different factors. 

Good luck...