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[Sherrye McAnelly]

We are opening a sports bar and found out that there is another one in a northern state and we are in Texas.
They did have it trademarked but it has been a dead trademark since April of 2005.  Can we legally use that trademark?  Can they come back on us if we use it and can we trademark it ourselves.   Thank you very much.

[Isaac]

When you say that the trademark is dead, I think what you are really saying is that the federal registration is dead.  Trademark rights come from use in commerce and not registration.  So the important questions are, is the trademark still in use, and can you use the trademark in Texas without infringing the mark.

These are fact specific questions that can only be answered by looking at the mark in question and its usage.  You cannot get a useful answer on a public forum.

[Sherrye McAnelly]

We are changing the trademark some but using a portion on the name (the main part).  I really don't care if we trademark it but would like to use it and don't want to open ourselves up to someone coming in and saying we can't use it because our liquor license as well as all our signage and literature is in that name.  I've thought about calling them (we don't know them) but I've been told this could be like opening a can of worms!

[McAnelly]

And - yes they are still using the name and trademark and it is dead through the registration office.

[Isaac]

I'd recommend engaging a trademark lawyer and telling him or her the whole story including what mark you want to use, and making your decision based on what the lawyer tells you.  

There seems to be a good chance you'll receive a green light, but there is enough risk involved that it's worth spending a few dollars to know where you stand.

[JSonnabend]

Everything Isaac has said is accurate, in my opinion.  I'll add that geographically speaking, the two marks may very well be able to coexist.  As Isaac suggested, though, you'll have to speak directly to a TM attorney to go over some additional details.

- Jeff