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[Enterprise]

A small clothing manufacturer had a trademarked logo filed with the uspto but it was abandoned over 4 years ago  "because the applicant failed to respond or filed a late response to an Office action." I am interested in taking over this trademarked logo and starting a new business venture. What would I have to do to register this trademark? Can they be purchased from the original owner or can I simply take it over?

[Kaitlin]

It's a common misperception that the status of a trademark depends on its registration status.  That is not the case.  Trademark rights in the US depend on USE of the mark, and trademark rights exist apart from registration. 

So while finding a mark you want to use has an abandoned registration is better than finding one that has an active registration, it's just the beginning of your inquiry.  The search needs to focus on whether that company -- or any other one in any related line of business -- is currently using that mark/logo or a similar one.  (And even if that company isn't currently using the mark, if there's a good reason for them not using the mark, they may be able to reclaim rights in it, depending on various factors.)

Also, I believe it's still true that trademarks cannot be bought or sold unless they're sold as part of a package deal with the business.  (Although it is possible to license use of a trademark from an existing owner provided the owner retains some quality control over the product or service attached to the mark.)

If the mark is clear for use, it is possible to apply to register the mark with an intent-to-use (ITU) application before actually use of the mark in commerce, but note that registration won't be granted till after the mark is being appropriately used in interstate commerce.  Note that you should determine whether the mark is likely not to infringe on any other trademark before starting the registration process, ideally by having a trademark attorney -- who knows what to look for and how to balance competing factors -- give an opinion on the results of a full search for both common law and registered marks.

There's a pretty good description of trademarks at http://www.ideafinder.com/guest/glossary/g-trademark.htm .

[JSonnabend]

If the mark has been abandoned, and not just the application for registration, then it should be clear for you to adopt and register.  I am assuming no "residual good will" issues.

- Jeff

[Enterprise]

If the mark has been abandoned, and not just the application for registration, then it should be clear for you to adopt and register.  I am assuming no "residual good will" issues.

- Jeff

Concerning residual good will; I have read that according to an excerpt of tha Lanham Act:

"A mark shall be deemed to be “abandoned”. . . when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for three 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."

The logo has not been in use since Feb. 2007 so it meets the above criteria so my next question would then be: How do I begin the process of adopting this logo for use on own products? Should contact the original owner or can I just file my ITU?

[Kaitlin]

"Prima facie" evidence means your evidence prevails if it's not rebutted.  Also, the question at issue is one of the company's "intent", not the mere fact of non-use.  Rebuttal evidence could be made by showing the registration was unintentionally abandoned, and that there was an ongoing intent to keep using it.  It is possible for companies to justify a period of non-use.  (I wouldn't want to be in their shoes having to do it, but it can be done.)  Also, note that the Lanham Act section you've cited relates to registration under the Lanham Act, although courts can look to that for guidance in determining abandonment of common law marks.

This isn't to say you can't use the mark or that the former owner is out there ready to bite you.  I'm just saying you should proceed cautiously and realize that if you haven't checked beyond the PTO list of marks, there could be someone, whether the former owner of the registration or someone else, out there using the mark or a confusingly similar one on competing goods.  A full common law search of any proposed new mark is always a good idea, in my opinion.

[JSonnabend]

How to proceed is a question without a definitive answer.  Much depends on what you know about the former TM owner and how risk tolerant you are.  Your options range from simply adopting the mark as your own to investigating the former owner's status and/or seeking "permission" from the former owner.

Each course of action has its own risks associated with it.  Best bet is to speak to a qualified TM attorney to work out the course of action most appropriate for you personally.

- Jeff