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Author Topic: Trademark long expired and company sold 4 times  (Read 1176 times)

labtbird

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Trademark long expired and company sold 4 times
« on: 03-03-17 at 01:27 am »

I searched around but couldn't find something here quite like this and wanted to get some feedback on this TM issue.
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I am interested in registering a Mark for a product.  This Mark was once registered but has been expired since 1995 and is listed in TESS as "Dead."

Company "A" registered the mark in the mid 1970's, but during its then 20-year renewal period Company "A" was sold to Company "B."  The Mark was not sold and remained listed under Company "A" but Company "A" soon ceased to exist. Company "B" continued to use the mark and to make the product, they never registered or renewed the mark.
 
Sometime shortly after 2000, Company "B" sold the item to "Company C" who also continued to use the now expired mark and to make the product. 

A few more years passed and Company "C" sold the item to Company "D" which was a non-US-based company who continued to use the Dead mark and make the product.  Company "D" has now discontinued this product within the last 6 months with a stated intent to never make it again. 

To be clear, companies B, C and D never registered the mark nor were listed as its owner, they just made and sold the product under the name (for all these companies, this product was a fringe item, they had many and much bigger items, all three companies still exist (only Company "A", the registrant of the mark is gone)).

Would I be able apply to register the mark and make a very similar or duplicate product?  Or is there any possible claim left on this that I should be aware of? (there is no patent involved, just the 22yr old dead trademark for the name.)

Thanks!

 
« Last Edit: 03-03-17 at 01:29 am by labtbird »
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MYK

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Re: Trademark long expired and company sold 4 times
« Reply #1 on: 03-03-17 at 03:58 am »

You are confusing registration with rights.  In the U.S., trademark rights come from USING a mark to identify the source of a good/service, not from registering it.  Companies B, C, and D still had trademark rights in the mark.

The trademark has by now accrued significant "goodwill" -- customer association between the mark, the good, and the company that sold it under that mark -- which is of course exactly why you want to use it.  The USPTO probably won't allow you to register it for the same or a closely similar product, because people will still identify it as being associated with the prior companies, and you would be trading upon their reputations.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

labtbird

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Re: Trademark long expired and company sold 4 times
« Reply #2 on: 03-03-17 at 07:16 pm »

That is helpful.  Thanks. 
The one different variable is that the companies are not actually widely known as being connected to the mark or product (a weird market phenomenon).  People who use the product associate the mark and the good together, but not the company who made it.  They simply don't pay attention or care much who is making it since it has changed hands so many times now, and for the companies it was very peripheral to their main business interests.  So, There should not be any noteworthy connection to the reputation of the companies.

My interest isn't that I want to connect myself to the reputation of the companies who made the item in the past, but it is to keep the item in the marketplace (admittedly a niche market).  I've found some measured success dealing in the smaller potatoes that larger companies no longer want to mess with.

A hypothetical comparison might be helpful.  It would be like a company that makes Tennis Balls and is known well for their Tennis Balls, but they also have this weird Salt & Pepper Shaker line that came with the purchase of the last company, and only some fanatic Salt & Pepper Shaker collectors want the line produced.
 
Companies "C" and "D" actually discontinued the line at the time they purchased, but the noisy niche convinced them to keep it alive.  However, now "D" has now permanently ended its production.

Would that alter my chances at all? 
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artchain

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Re: Trademark long expired and company sold 4 times
« Reply #3 on: 03-04-17 at 02:06 pm »

That is helpful.  Thanks. 
The one different variable is that the companies are not actually widely known as being connected to the mark or product (a weird market phenomenon).  People who use the product associate the mark and the good together, but not the company who made it.  They simply don't pay attention or care much who is making it since it has changed hands so many times now, and for the companies it was very peripheral to their main business interests.  So, There should not be any noteworthy connection to the reputation of the companies.

Would that alter my chances at all?

Makes no difference.  Consider the mark to be a 'brand' that is associated with the goods.  The company that owns the trademark rights essentially owns the brand, and the good will that accrues to it. 

Tobmapsatonmi

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Re: Trademark long expired and company sold 4 times
« Reply #4 on: 03-05-17 at 05:01 pm »

Not a trademark guru.  I find this result troubling, though. 

Let's take the case of D, the last user of this mark on the product (or very similar product) that OP wants to market.  D discontinued the product some 6 months ago (if that's what "within the last 6 months" was intended to communicate) and made a noisy exit from the market.

How long is long enough?  I think federal law says that failure to use in commerce for three years is grounds to argue abandonment and to seek registration cancellation. 

But in the context of common-law rights only, how long of a failure to use in commerce is long enough?

As I said, I'm no TM guru.  But if I were a business person interested in using this mark and making this product, I'd be willing to take a swing (and possibly a miss) at registering with intent-to-use.  I'd say to talk to someone who is a TM guru and find out if there's any case law in general relating to apparently abandoned marks at common law and if there are any general guidelines on waiting periods.


Edit to add:  Of course, even if I'm right, that doesn't mean D won't start making threats if it thinks it can extract some value from the situation.
« Last Edit: 03-05-17 at 05:07 pm by Tobmapsatonmi »
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MYK

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Re: Trademark long expired and company sold 4 times
« Reply #5 on: 03-06-17 at 01:39 am »

Not a trademark guru.  I find this result troubling, though. 

How long is long enough?  I think federal law says that failure to use in commerce for three years is grounds to argue abandonment and to seek registration cancellation. 

But in the context of common-law rights only, how long of a failure to use in commerce is long enough?
My understanding, perhaps incorrect, is "until the goodwill is exhausted."  Once people no longer associate it with the other companies, it's available to use again.  You could probably make a case for it after people stopped reminiscing about "the good old days when D made and sold X and candy bars cost a nickel."

In related news, a company I know in Washington state resurrected a few old products, even going so far as to sell them under the original names.  The old companies had gone out of business in the 1960s and 1970s.  So, I'd guess that's probably long enough.  They were very clear that they were the manufacturer and had recreated the old-timey products (not perfectly, but you have to know what to look for to tell which is which, or just look at which one is new and shiny I guess), though.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

labtbird

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Re: Trademark long expired and company sold 4 times
« Reply #6 on: 03-22-17 at 02:23 pm »

Thanks for all your comments, very insightful and helpful.  Much appreciated!
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