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[arboretum]

I started working on a new technology in 2001.  A friend suggested a really good name for it but I found out on TESS that it was already taken for my category of trade.  However I tried to find an example of the name used in commerce and found none. It puzzled me.  I kept checking back as I developed the technology.

Well, sometimes it takes a long time to develop new technologies and now 7 years and 2 patents later, I am fully in the middle of licensing negotiations.  Both potential licensees love the name I have proposed and they encourage me to see if I can register the name.  There are other possible names for the technology, but this is the best and most descriptive one.

I have done a fair amount of research since 2001 on a consistent basis.  Here are some findings:

The person who originally registered the name in 1993 and used the name in 1993 and 1994  (with a registration date in 1995) sold the intellectual property of the company to another company in 1997.  Since that time, this former owner (who is active in the industry) has never seen the name used in commerce by the last listed owner of the mark.  Never seen it in industry ads.  Never seen it at a tradeshow.  Never seen any product with that name in any of the stores he or his reps sell to (basically all of them).

I checked Google, Yahoo, Ebay, and Craigslist.  No use of the mark in commerce or on a product at least as far back as 2001.

I called the company that is the registered owner of the mark.  None of their people in Customer Service or Product Design/Development  have ever heard of it.  They are convinced that I am wrong about them owning it.  They know nothing about it and even sent me emails telling me so.

I am guessing that nobody at the current company listed as the owner of the mark (except maybe the CEO and his IP lawyer) even knows that they own it.

I want to get access to this mark but do not want to get held up for ransom. The CEO of the last listed owner has a reputation of being a shark-- a difficult guy who is always trying to put his hands in other people's pockets. 

What would be the safest way to proceed in getting access to this mark?  Should I file a petition to register the mark and at the same time file a petition to cancel with the TTAB?

Another friend suggested just to start using the mark, but the licensing companies do not want to take the chance of getting sued.

Thanks for you help.

[JSonnabend]

First, to answer your question, you can seek cancellation of a registration for a mark that has been abandoned.  Be advised, however, that showing abandonment can be difficult.  If the mark has been out of use for five years, abandonment may be presumed, which would help your case significantly.

Second, you state:

There are other possible names for the technology, but this is the best and most descriptive one.

That's not something you want to say publicly.  Merely descriptive words or phrases cannot function as trademarks and are neither registerable nor protectable as trademarks.

Ultimately, my advice to you is to seek the services of a qualified TM attorney.

- Jeff

[arboretum]

Jeff

Thanks so much for your advice.


Trying to do intellectual property law by yourself seems a bit like do-it-yourself brain surgery.  I have about a dozen patents and always hire a well-respected firm to do the work.  But I have found that the more I have educated myself in advance, the better the lawyer can help me.   The whole process is less frustrating, less costly and more productive. 
 
A couple of points.  First, I have confusingly used the word "name" and "mark" interchangeably which may have caused some confusion. I am talking about a distinctive name that I think would make a strong trademark.   Second, I have been tracking this mark since 2001, but even then was not able to find any evidence of any use in commerce for the previous few years, so I think it has been out of use for about ten years.

A few questions. 

Since the mark was originally registered in August 95 and it is still showing as live on TESS, I would assume they had to file a Section 8/9 Renewal in 2005. (Correct?)  It seems likely that their lawyer did this as a matter of course, but that the mark was not used.  Is it possible for someone to access those forms and see what was declared?  Can this be done online?

Assuming no actual use shows up, do you think I should that I should seek to file a registration on an intent-to-use basis at the same time that I file the notice to cancel-- or would that create confusion?

Do you know of any case law for a situation that is similar to this one?

Thanks

Timothy