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Author Topic: What if a dead mark is reused by original owner?  (Read 758 times)

Jim N

  • Guest
What if a dead mark is reused by original owner?
« on: 08-12-06 at 09:14 pm »

I currently have a trademark registered for a comic book title (character and title are the same) that I self publish and sell.  I filed for the application myself and was awarded the trademark even though another company had a registration that was virtually identical but was listed as Dead (Cancelled).  I assume that the other company had let the mark’s registration lapse and didn’t object when mine was filed for opposition.

Prior to registering, I did some research and found that the other company’s character and title had not been used in any comics for about five years.  I also could tell that the characters’ visual appearances were very different.

I understand that the registration and actual use of a mark are very different, so my question is this:  what is to prevent the other company from “bringing their character back” (a very common occurrence in comics) and claiming that I am now in violation of their mark due to it having seniority through the earlier registration

Even though their original registration lapsed and they stopped using the mark for a period, if they begin using it again, can they argue that they have been using it in commerce from the original “First Use” date until now?        
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JSonnabend

  • Guest
Re: What if a dead mark is reused by original owne
« Reply #1 on: 08-14-06 at 06:25 am »

There is no such thing as a "dead mark", only a "dead" registration.  That distinction lies at the heart of your inquiry.

Quote
what is to prevent the other company from “bringing their character back” (a very common occurrence in comics) and claiming that I am now in violation of their mark due to it having seniority through the earlier registration

Nothing, really.  The question would be, did they actually abandon their mark?  That's always a risk in adopting a mark previously used by someone else, although the risk decreases the longer the mark has been ostensibly abandoned.  Considering your admission that "bringing back" long dead characters is common in the industry, you'd likely have one or two strikes against you right off the bat.

Quote
Even though their original registration lapsed and they stopped using the mark for a period, if they begin using it again, can they argue that they have been using it in commerce from the original “First Use” date until now?    

Yes.  That's really the same question as above, namely, did they actually abandon the mark.  If not, it's essentially been used in commerce from the original first use date.

- Jeff
« Last Edit: 08-14-06 at 06:27 am by JSonnabend »
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