When is Abandoned Trademark Abandoned?

Dear Rich: I would like to use a trademark that was first used 2/2007 and has been deemed 'abandoned' since 8/2008. On your blog you note that the trademark is deemed abandoned if the owner does not use it for an extended period of time with the intent not to resume use. How can I find out if the owner intends to use it? What did the owner do/not do that caused the trademark to be deemed 'abandoned'? Thank you for your help! And thank you for triggering an ancient memory of watching "Seduced and Abandoned" in the local art theater with my dad. What a great movie -- even though it was a comedy, it was kind of scary, too.
Right, you had a question. There are three types of trademark abandonment:

• an abandoned trademark -- this refers to the loss of trademark rights due to nonuse and it occurs when there is sufficient evidence that the owner intends to discontinue use of the mark. Under the Lanham Act, a mark registered with the U.S. Patent and Trademark Office is presumed abandoned if it is not used for a continuous period of three years or more.
• an abandoned trademark application -- this refers to an application that is ditched during the application process.  We're guessing that's what your question is referring to because it fits best with your timeline. If you're wondering why a trademark application has been abandoned, you can do the detective work and find the reasons by checking the TARR status of the mark, or if necessary by reading through the documents you can access for free via the USPTO's TDR (Trademark Document Retrieval). This is accomplished by clicking around and reading the PDFs associated with the applicant's file. By reviewing the documents in the application file you can learn whether the applicant just ran out of steam at the USPTO or whether the  USPTO examiner had a good argument as to why the mark shouldn't be registered. Keep in mind that if an application was abandoned because an examiner objected to registration that could be a strong indicator that you will run into problems with the same mark.
• an abandoned trademark registration -- this refers to a trademark registration that is canceled, usually because the owner failed to follow certain formalities such as a renewal. Again, you can find the reasons by searching trademark records. The most common reason is that the owner didn't file a statement of continued use, resulting in cancellation. Often it's okay to step in and begin a similar use but you should always check the marketplace to confirm that the previous owner is not still claiming rights even without the registration.

As for determining whether a company abandoned its use of a trademark, you need to do old-fashioned research. Check retail stores, search online, or -- as we used to do back in the day -- call the company and asking whether you can still buy the product or acquire the service.

Can You Own a Community Event?

Dear Rich: I'm on a non-profit board that puts on a race of human powered art machines. The non-profit was formed when “ownership” of the race was tied up in litigation and the artist who started the race asked a group of his friends to find a way to keep the tradition alive. The non-profit was formed, the event name changed and now we have been putting on the race for five years. Further, the non-profit has other fundraisers it does to fund the Memorial Day race. This year the artist’s son claims, as heir to his father’s estate, he “owns” the race and sent a cease and desist letter that we were putting on “his” race illegally. He has not used the old race name in 5 years. We don’t have much money for a legal battle around this, but can find no trademarking of events or races at the USTPO. Battles over who owns festival or event rights are almost always about who owns the name/trademark. (Here's a recent example and here's one from 2010.) It's possible that other issues may arise in these disputes -- for example, contract disputes (if agreements have been made between the parties) or claims of defamation. But in general, if the dispute is about who "owns" the festival, the dispute will come down to who owns the rights to the name and logo. Event names can be registered at the U.S. Patent and Trademark Office (to see examples, visit the USPTO site, choose Search Marks, then Basic Word Mark Search and type in "festival").
What About the Artist's Son's Claims? Because you're using a different name, we're not sure what claims the son may have. The idea of "owning" the race apart from the trademark seems like a weak claim unless there's a breach of an agreement or one party has interfered with a contractual relationship. (What was the result of the litigation?).  If the son is planning to use the same name you've been using for the event, you probably have a superior claim because of your five years of use.
What about the son's five years of nonuse of the trademark? Three years of nonuse of a trademark creates a presumption that the trademark has been abandoned. At least that's the rule for federally registered marks. That's just a presumption however and if the son can prove that during the five years he always intended to resume use, then his rights to the mark will not be considered abandoned.
Takeaway points. You should file a federal registration for your trademark (probably in Class 41). Often the success of an event hinges on the organizer's relationship with the government that issues the permits and the merchants who serves as sponsors. It's possible that if you focus on these relationships and maintain your name rights, you will be able to continue without hassle from others.

Can County Hassle TV Show Over Use of Seal?

click to see gruesome details

Dear Rich: A local government watchdog group put on a cable-access TV program where they used as their logo a spotlight shining on the seal of that government (Union County, NJ). On July 1, 2010 Union County submitted an application for a trademark on their seal and soon thereafter (9/17/10) the county counsel for Union County wrote a letter to the local cable channel telling them to stop using the Union County seal on the program since a trademark was pending. The letter is here. This is now the subject of a lawsuit described here. The question: can a government even trademark their seal? First of all, you failed to mention that the Union County seal is the only government seal in the U.S. that depicts a woman being shot. We thought it was some kind of misogynistic take on the Revolutionary War but it turns out that it's based on a real event -- the killing of Hannah Caldwell, a mother and homemaker from Union. We like the native-art illustration and wonder why the County isn't pursuing copyright infringement claims as well!
Right, you had a question. As much as the Dear Rich Staff supports the right of New Jersey county officials to hassle public access TV shows, we think the matter is moot (as the lawyers like to say) because the USPTO killed the county's trademark application last week. We have to agree with the trademark examiner who rejected the trademark application on October 18, 2010. She wrote:

Registration is refused because the applied-for mark consists of an insignia of a U.S. municipality. Trademark Act Section 2(b), 15 U.S.C. §1052(b); see TMEP §1204. Trademark Act Section 2(b) bars registration of marks that include the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation. TMEP §1204.

You can read the complete rejection here. The County had six months to respond. We guess their tickler system malfunctioned because last week the trademark application was officially pronounced as abandoned. Here's the notice of abandonment. That's $325  in taxpayer money (not to mention county counsel expenses) down the drain! And in any case, even if the County has a protectible but unregistrable trademark, the TV show use is permitted under First Amendment principles.

Had Domain Name First! Do I Own Trademark?

Dear Rich: In 2008, I purchased a domain name for a service business I wanted to start (abc-company.com). I'm based in the US and did a variety of small jobs under that business name for a while but due to life circumstances wasn't really able to give the business my full attention. Recently, I decided to refocus my energy on this business and begin building it again. It turns out in 2009, somebody else registered a similar domain name (abc-company.net). They are based in the UK but have a strong US presence, and they have published a book by the same name (ABC Company) and given several popular talks under the same name. While I have the company's name on LinkedIn, they have it on Facebook. The nature of our work crosses over in many ways but our service offerings are different. Their company clearly comes up in the search results before mine and is currently more established than mine. Would the fact that we are in different countries affect the rights to who has the best claim on the trademark? Do either of us have a right to that trademark?  The Dear Rich Staff suggests you consider the following questions.

• Have You Established Trademark Rights? Your first question, regardless of the other company's use, is whether you qualify for a trademark. If yes, you may be able to claim a priority based on your earlier use of the name. Using a domain name doesn't create trademark rights. You have to use the domain name in a manner that customers associate with the business. For example, the original domain name for this blog was: patentcopyrighttrademarkblog.com, a URL that could never function as a trademark because it is the generic term for a blog about ... guess what? On the other hand, "Dear Rich" passes the test for "On-line journals, namely, blogs featuring commentary and information in the fields of patents, copyrights and trademarks." The fact that you stopped for a while may hurt you if you get into a spat and the other side argues that you abandoned the mark. But that's unlikely as abandonment typically requires three or more years of nonuse. 
• Have They Established Trademark Rights? The fact that you're in different countries may be sufficient to avoid a dispute, provided that each company caters primarily to consumers in their own country and is not concerned with what happens across the ocean. If your UK doppelgänger is expanding into American markets, they may file with the U.S. Patent and Trademark Office. You can periodically check Trademark Office records (here's a video explaining how) to see if the company has filed anything. You may object to the registration if you have sufficient basis.  Again, if the term is generic, it will be equally tough for the UK company to claim rights.
• Can You Both Claim Trademark Rights? That's possible if, like you say you offer different services. Many companies have the same or similar registered trademarks because the U.S. Patent and Trademark Office permits different companies to use the same mark if their services or goods are not likely to confuse customers (For example, nobody thinks that the people who make Arrow shirts also make Arrow staplers) 
• Do You Need a Registered Trademark? The longer that you both co-exist without any confusion, the more likely that things will stay that way and you won't have to be concerned about fighting over registrations. Here's a recent case about domain names where that issue came up. On the other hand, if  you're concerned about expanding your business or you just want to shore up your rights -- and you have $325 to file a federal application -- go ahead and file for a trademark but take a look at this information before doing so.