Using the trademarked name of a business no longer in business

February 7, 2006 4:31 PM

Another MeFi trademark question: A small restaurant chain (let’s say ABCFood) opened in Colorado in 1996 and closed all its locations in Q4 2004. All of ABCFood’s state business registrations are in "Delinquent" and/or "Administratively Dissolved" status, and the proprietor has moved on to other endeavors. The USPTO still has a "live" listing for ABCFood’s trademark, though, as mentioned, the mark is no longer maintained. What obstacles would stop someone from hypothetically opening a similar chain with the name ABCFood in another state?
posted by fourstar to Law & Government (8 answers total)

If the mark is abandoned, then nothing.

How long you have to wait until a mark is abandoned is one of those questions judges can answer if someone sues somebody else.

To be super safe, it would be wise to wait until the maintenance period lapses and no paperwork is filed to renew the mark (10 years after registration, as your link says)
posted by falconred at 4:38 PM on February 7, 2006

There is no accurate way of answering this withoutknowing a lot more of the facts. Regardless of any registrations, you still may have common law rights to deal with. It does not take much "use" to qualify as use.
posted by anathema at 5:05 PM on February 7, 2006

Try http://www.inta.org/legal/tmtopics.html
posted by Izzmeister at 5:12 PM on February 7, 2006

Response by poster: Thanks for the answers above. To narrow the question: If a trademark-holder has an accepted Declaration of Incontestability ("Section 15") on file with the USPTO but has subsequently ceased opperations, can their Section 15 be challenged?
posted by fourstar at 7:06 PM on February 7, 2006

Before using the mark contact an attorney. It would sound as if the mark is abandoned and you could acquire it for yourself, but even if you just want to use it, play it safe and talk to a trademark attorney. Consider it part of starting the business. It will also be nice to tell any investors or lenders that you have cleared your mark with an attorney.

btw check out the linking policy at the INTA site. " If you are interested in linking to INTA's website, please notify INTA by sending an email to [e-mail]. Include your name, your organization name, contact information (such as a phone number and/or email address) as well as the URL of your site and a list of any URLs from which you intend to link to INTA's website...."
posted by caddis at 7:11 PM on February 7, 2006

Thanks for the answers above. To narrow the question: If a trademark-holder has an accepted Declaration of Incontestability ("Section 15") on file with the USPTO but has subsequently ceased opperations, can their Section 15 be challenged?

Yes.

The Lanham Act section 15 states incontestability may granted "except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 14 of this Act".

If you then turn to section 14(3), you will see that any mark which is abandoned may be cancelled.

/not-a-lawyer, get your own lawyer
posted by falconred at 9:12 PM on February 7, 2006

One of the first things that you do in entertainment law is called a trademark application search. Basically, it means paying the trademark office some dough for them to check their rolls and see if anyone else has the trademark you want in a contested area, and usually involves them contacting mark holders to inform them of your intention. If the mark holders take no action, it can be seen as an abandoned trademark.
Note: Not a lawyer. This comes from a four-year-old memory from an entertainment law class I had to take. Get a real lawyer for trademark issues.
posted by klangklangston at 10:19 PM on February 7, 2006

Sorry, klang, but almost all of the information in your post is completely wrong.
posted by anathema at 2:48 AM on February 8, 2006