Watson IP Group

Watson IP Group

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Can you trademark something that already exists, but is not being used?

How to Use a Previously Trademarked Product

If a similar mark is currently Federally Registered, all hope is not lost. And there are a number of different factual situations, and a number of different legal considerations.

For example, it may be that the mark that is Federally Registered is slightly different or for unrelated goods and services. As the hallmark of trademark law is centered on a likelihood of confusion, it may be that an analysis of the 13 factors analyzed to determine a likelihood of confusion may yield a position where it is favorable to attempt registration and argue that there is no likelihood of confusion. In such an instance, it will be possible to obtain a registration despite the other registration. This is not possible in all cases, as sometimes the marks are too close, the goods and services are too close in relationship. Nevertheless, it is certainly time well spent to make an analysis if you find that there is another Federal Registration that is similar to a desired mark.

It may be possible to reach out to the owner of the other registration to determine if there can be a consent agreement between the parties. In some instances, where both parties believe that there is no likelihood of confusion, it may be possible to contact the owner of the other mark and to propose a consent agreement. In a consent agreement, the owner of the other mark agrees that there is no likelihood of confusion. This is not always easy, as you are asking the other owner to consent, and, it is not generally human nature to consent to something if it is not required.

In other cases, it is possible that a Federal Registration exists, but that the other party has gone out of business or has stopped using the mark. As registrations only require proofs of continued use on intervals of five years and then ten years, it may be years before a dormant or dead mark expires or is cancelled. If for example, a trademark owner goes out of business one year after filing a renewal, it will be another nine years before the registration expires. If you find yourself in such a situation, it is possible to file an action with the USPTO to cancel the trademark registration. It is an affirmative process, but, if granted, the prior registration is cancelled and then you can proceed.

Sometimes, if the factual situation is right, a registered trademark may be close to expiration. In such a case, it may be advisable to file an application and then based on timing, by the time that the new application is reviewed, the registered trademark has expired. There are manners in which to work with the timing to secure rights while filing prior to the cancellation of the other registration, and without filing a cancellation.

Finally, in some situations, there is really no alternative than to pick a different mark. Prior to selecting another mark, however, it is best to consult an intellectual property attorney to determine if there is a possible course of action.

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