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USPTO Status is DEAD

Labeled as question in Legal Discussion, started by gericsb, Dec 31, 2020

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  1. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    Quick question:

    I found a generic product name made by a company. Word1Word2. During my USPTO search the status is now: DEAD

    There is a new LIVE Trademark that uses:
    NewWordWord1Word2

    My assumption is that the first TM of Word1Word2 was SO generic that the company was probably forced to come up with the new 3-word product name.

    My question is this: When the staus of a TM on the USPTO site is: DEAD, is that name now free to register, in your opinion?

    Thank you.
     
    Last edited: Dec 31, 2020
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  2. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    https://www.namepros.com/threads/my-domain-has-a-dead-trademark-am-i-safe.583730/#post-3446854

    The notations "dead" and "live" in the USPTO database are references to file status.

    The USPTO database is not a "database of trademarks", there are a variety of different records there which mean different things.

    What matters is whether these people are using the term at issue as a trademark, and not whether some file in the USPTO is active.

    What can be illuminating is the reason why this record has that notation, but from the information you've given, there is no way to tell what, if anything, is or is not going on.

    https://www.namepros.com/threads/trademark-question.1151153/#post-7381430

    Look at this example:

    [​IMG]

    Of those 13 records relating to "oy", there are:

    4 abandoned registrations
    1 abandoned application
    5 pending applications
    3 registered marks

    If those FOUR categories are not obvious to you by looking at that table, then it would do you a lot of good to figure out why I could group those records into those four categories simply by looking at that table.
     
  3. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    Thank you very much for this response, Dr. Berryhill!
     
  4. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Did the "DEAD" one ever register? Or is it an abandoned application which never registered?

    Is the "LIVE" one a pending application or a registered mark? If it is a pending application, is it a 1(b) intent-to-use or is it a 1(a) use-based application?

    If those questions make no sense to you, then you are primarily wasting your time looking at a database in which most of the data is basically meaningless to you.

    Here's the question you should be asking:

    When you do a GOOGLE SEARCH on the term in question, and perhaps adding the name of the applicant, do you come up with anything actually for sale using the mark?
     
  5. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    "DEAD" can mean any of the following:

    (a) it was a pending application which was never registered, which could have happened for various reasons, or

    (b) it was a registered trademark and the registration was not renewed.

    Neither status, by itself, tells you "does this person have a trademark". Maybe they had a falling out with their lawyer and never completed the registration process. Maybe the application was refused for any of several reasons which would be REALLY interesting to find out by checking the "TSDR" button right above the record in the TESS database.

    It could be lots of things. It's like asking "I have a headache, what's wrong with me?" Well, anything from lack of sleep to a brain tumor.

    "LIVE" can mean any of the following:

    (a) it is a pending application which is not yet registered. Maybe it is newly filed. Maybe it has had an office action which would be REALLY interesting to know about by checking out the "TSDR" button...

    (b) it is a registered trademark.

    Neither status, by itself, tells you "does this person have a trademark".

    For example, someone could have gotten a registered trademark many years ago. Trademark registrations require renewal after six years, and then at ten year intervals.

    However, failure to use a mark in commerce for three years constitutes presumptive abandonment of the mark.

    What this means is that you can be looking at a "LIVE" registered trademark, of a business that got a registered trademark 17 years ago, and then went out of business five years ago. That "LIVE" registration is for a trademark which, in fact, has been abandoned for two years, and that "LIVE" registration is going to stay that way for another three years.

    If that is too complicated, let me use my favorite example.

    Please humor me and answer the following two questions:

    1. My town requires that dog owners get a license and to renew that every five years.

    Now, you tell me, if you go to the town records of dog licenses, and you see that I have an active dog license which was last renewed two years ago - DO I HAVE A DOG?

    Yes or no?

    2. You go to the town records, look up my name, and you find that I do not have a dog license - DO I HAVE A DOG?

    Yes or no?

    Regular readers of the NP legal forum should be able to answer those two questions, and to explain what it has to do with digging around in trademark registration records at the USPTO.

    The short answer is whether I have a LIVE dog license or a DEAD dog license does NOT reliably inform you about whether I have a live or dead dog.

    If you want to know whether or not something is going to bite you in the ass at my house, you are going to have to do more than look at government registration records.
     
    Last edited: Dec 31, 2020
  6. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    This is exactly what I did before posing my original question. The answer to that question is: No

    The current product name (that contains the original two-word) domain with an additional word added to the beginning IS for sale by the company.

    But the original two-word generic description is not being used.
     
  7. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    So look at why the two-word term was refused registration.

    You can go to TSDR, click on the "Documents" tab, and read the full record of correspondence in that application.

    You are going to want to look at the initial and final office actions and see why the USPTO refused registration.
     
    Last edited: Dec 31, 2020
  8. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    This is quite interesting and you are definitely making me think!

    I appreciate the time you are taking to explain the intricacies of trademarking and licensing.
     
  9. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    TSDR Description for two word term:

    Registration was not renewed and therefore has expired (this is the exact phrase used)

    Thank you!
     
    Last edited: Dec 31, 2020
  10. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    It would be nice if you can do the same thing for the Marriage License so I can decide to renew or not after 5 years.
    So according to your example:
    - I can have a Marriage License but don't have a Wife or
    - I can have a Wife/Girlfriend without a Marriage License

    I think all men will agree to this idea!!!
     
  11. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    Lolol....

    Candidate for post of the year!!

    😁
     
  12. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    There you go.

    You can look up mine the Clark County, Nevada register:

    https://clerk.clarkcountynv.gov/AcclaimWeb/Marriage/FindMyMarriageRecordSearch

    (as some of you likely know, Clark County is where Las Vegas is located)

    Now, like I told my new wife when we got back home, we're only really married in Nevada.

    But, that's a really good example. My marriage is registered in Nevada. If I get (another) divorce in Delaware, you won't know that by looking at the Nevada marriage records.

    It was very romantic. We had the kids with us and when we got to the counter we said, "We'd like to get married and put these kids up for adoption."

    The lady behind the counter said, "I can get you married, but you'll have to go to another office for the adoptions. We only put families together here. If you want to take them apart, you'll have to go across the street to the other office."
     
  13. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    Did not know that we are neighbor. I am about an hour from you.
     
  14. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Yeah, so, some of my first questions would be whether the renewals were being paid in-house or by an outside firm, and where that firm/attorney was when the renewal deadline rolled around. Shit happens. Reminders don't get set. People retire or die. Companies get bought. Rights get assigned. And stuff falls between the cracks.

    There is a WEALTH of information accessible in the USPTO database. It's not a magic 8-ball where you say "can I register a domain name" and it comes up with a "yes", "no", or "ask me later". All of the data in those records - including the stuff where it says "status 1(b)" and other things that don't make apparent sense - mean something.

    BUT - what you find in the USPTO records is frequently a starting point for further investigation elsewhere, and sometimes is not an end point for getting a simple answer to a question.

    That's why you will find countless threads in this forum asking more or less the same question over and over, and in which you'll find me, in various degrees of exasperation, insisting that the best trademark database is right here:

    [​IMG]

    ...and even then it helps to know a few things.
     
  15. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    That's kind of scary. What are you having for dinner?
     
  16. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    Lobster Rolls.
    It took almost an hour for my son to wait in line to pickup the order.
     
  17. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Shoot. Wish I'd known sooner. I could have been there by the time he got 'em.
     
    Last edited: Dec 31, 2020
  18. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    Sorry may be next time. They closed at 5 today.
    I used to have Domainers meetups a couple of times years ago in King of Prussia
     
  19. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    I
    Yes, I started with Google and used some common sense (whatever amount I have left!)

    Thank you and Happy New Year!
     
  20. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    With Google AND common sense, you can accomplish much.

    The most basic thing to know about trademarks is that, generally speaking, a trademark is a word, phrase, symbol, whatever that is perceptible to consumers in the marketplace for some set of goods/services which distinguishes good/services of one originator of them from competitors in the relevant market.

    So, the endless stream of "How do I figure out if something is a trademark" is greatly simplified if you put that question in the form of "How can I figure out if someone is selling something called 'X'?"

    Well, golly. If X = "dog food" then you can pretty quickly find out that there are a heck of a lot of people selling "dog food". If you apply common sense, then it becomes obvious that "dog food" doesn't distinguish between Purina, Alpo, or whatever it is people are feeding their dogs these days.

    But if X = "TIMEX" then you can also pretty quickly figure out that "TIMEX" seems to be very strongly associated with one maker of wristwatches.

    Now, sure, if you are selling Titanium in Mexico, and you are a genuine trader in metals, maybe you have a good reason for using the ISO symbol "Ti" and "Mex." to describe your business.

    BUT, and I believe I can say this to a high degree of certainty, if you are a Mexican titanium dealer, you sure as hell aren't posting "can I register this domain?" threads in the legal section of Namepros.
     
  21. gericsb

    gericsb Top Contributor VIP ★★★★★★★★★★

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    This is very, very helpful!!!

    The first part of this response is very useful for someone like myself and the LAST paragraph is absolute GOLD!! I laughed out loud and scared my [email protected]@@

    😁
     
  22. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    And, before anyone gets the notion that this thread is the be-all and end-all of understanding trademarks or the peculiarities of the US registration system, I would be remiss if I did not mention just one more thing...

    While I mentioned above that an application might proceed to registration or not, bear in mind that there are two types of registered marks in the US. In each trademark record you will see "Register: Principal" , "Register: 2(F)" or "Register: Supplemental" for registered marks. There are significant differences among those three things, and what they could mean.

    So, and on Namepros, the batting average tends to be pretty much .000 for noticing those distinctions, even if you are looking at registered marks, the TYPE of registered marks you are looking at can be very important. Is it on the Principal Register? is it on the Supplemental Register? Was it a 2(F)? Does it include a 2(F)-in-part? Are there any disclaimers?

    Even among "registered marks", there are distinctions and nuances that I could take the rest of the evening to explain.

    But I'm not going to do that tonight or any night soon.

    Believe it or not, trademark attorneys do not make a living by looking things up in a database and saying "yep, it's in the database", but in being able to utilize expertise gained through considerable effort to interpret what the data means and apply it to the facts in a way that someone making an economic decision might find valuable guidance and profit from it.
     
    Last edited: Jan 1, 2021
  23. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    And you never invited me?

    I’m willing to overlook the lobster roll thing, but you’ve been doing this foe a while now, haven’t you?
     
    Last edited: Jan 1, 2021
  24. The Durfer

    The Durfer Wesley Sweatman VIP Gold Account

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    thats interesting, i have an antique ant killer name that was a trademark in the early 20th century, cyanogas / com, but it has been dead since the 70s.
     
    Last edited: Jan 2, 2021
  25. johnn

    johnn WeSellName.com PRO VIP ★★★★★★★★★★

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    Ants don't live that long.
     

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