I thought that lawyer had to enforced the TM while it's still active i.e. to prevent people from capitalizing on the past goodwill of the company.
On their own, with no client? Who pays them? What public purpose is accomplished?
In another thread, I explained that the way you "get" trademark rights is to use a trademark. Well,
CONTINUED USE is required to maintain a trademark right.
This is the flipside of the problem with domainers' irrational fixation with trademark registration databases. You already know that someone can have a trademark without having a registration. It turns out that someone can also have a registration without a trademark.
In the US, for example, after the initial six year period, maintaining a registration requires the owner to show proof of continued use, along with a fee, every ten years. But a lot can happen in that ten years. If the mark is discontinued without the intent to resume use, then the mark ceases to be enforceable. In the US, non-use for three consecutive years is presumptive abandonment:
https://www.law.cornell.edu/uscode/text/15/1127
A mark shall be deemed to be โabandonedโ if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. โUseโ of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
Section (2) is called "genericide". That is what happened to marks like cellophane, escalator, zipper and nylon.
In the EU, nonuse for five years is grounds for cancellation of a registered mark. But, look at that first sentence in (1). When BigCo announces, "We aren't making or selling XXX brand widgets anymore," that's it.
The analogy I've used a zillion times before on Namepros is that my town requires a dog license if you want to walk your dog in the park. The dog licenses are open for public inspection, and valid for ten years.
Domainers are like a burglar who wants to know if someone has a dog, so they go look at the dog license database. First off, there are people in town who have dogs, but don't care to walk them in the public park, so they don't get dog license. Then, there are people who had a dog, got a dog license, and their dog either died or ran off in less than ten years.
So, yes, there are people who have dogs, but no license, and there are people who have a license, but no dog. It turns out that looking in the dog license database is a poor strategy for figuring out whether someone has a dog. It's a tool and a starting point, but it doesn't provide a definitive answer.
The same thing is true for trademarks - there are marks without registrations and there are registrations without marks.
So, if you find a registration that's been around for a while, you might want to go find out whether the registrant is actually using the mark (or licensing it to someone). Hmmm... how might you go about figuring out whether someone is actively selling something? Oh, right! By doing the thing you should have done in the first place!
One really good clue would be to look at the full file under TSDR and look at the last specimen of use filed. A lot of the time, it will be a print-out of a webpage. Get the URL from that specimen and have a look.
But, no, by all means, don't hire a lawyer. What do they know?
