The trademark I want to use and register, Zomboid, is marked Dead on the United States Patent and Trademark (“USPTO”) Register. Can I go ahead and use it on my products (video games) and register it as my trademark?
As with most legal questions, the answer is, it depends. Dead can mean a lot of things in trademark lingo. There’s Really Dead, The Walking Dead and what we call Zombie Trademarks, the ones that can rise from the grave to walk again in interstate commerce and make your life miserable.
Patents and copyrights expire, but a trademark can live forever, as long as it’s being used commercially. Sometimes, an owner will stop using a trademark, with no intent of using it again because he/she has changed branding strategies.
This is called “abandoning” a trademark (AKA Really Dead) and abandonment is presumed after three years of non-use; it is also grounds to seek cancellation of a Registered Trademark. However, there are a lot of hurdles to jump in order to find out if a trademark is Really Dead and therefore available to you.
Dead Trademark Applications
In the case of applications for trademarks that have been filed in the USPTO, a trademark can be abandoned while the application is in the works or after it has been registered.
So, in the case of Zomboid, for example: a trademark application for toys and games was filed by Mattel back in 1992 and again in 2004. Both are now marked as Dead and abandoned in the USPTO.
That sounds good, right? Yes, but we need to know more. Upon digging into the USPTO file, we see that Mattel apparently lost interest in the Zomboid trademark. Its applications went all the way through the year-long process, but Mattel then failed to submit proof it had started using Zomboid for toys and games.
Since the last Zomboid application was abandoned over ten years ago, this is a pretty good indication that Zomboid may be available now, but it’s not a certainty. The USPTO Trademark Register changes every day and there are over 5 million active trademarks of record now.
A check of Mattel’s website for Zomboid and a general Google search for Zomboid could reveal that Mattel, or another company, is now using the Zomboid trademark. Even if that person, or company, never filed an application to register the trademark Zomboid it would have “common law rights” flowing from actual use of Zomboid and your application for the trademark could be successfully opposed by that user.
In other cases where an application is marked abandoned it may be because the applicant missed a due date to respond to an examining attorney’s inquiry or objection (called an “Office Action”).
While a trademark is moved to The Walking Dead zone shortly after such a failure, it can easily be resurrected for up to two months by paying extra fees and filing a Petition to Revive. In other cases, the application may have been refused for any one of a number of legal reasons, and that could mean yours will be refused as well.
A Dead application that is marked as Withdrawn is the worst case of all. Almost no one withdraws an application, even if they have lost interest in the trademark, unless they have been forced to do so.
Usually, unwanted trademark applications simply die a natural death, expiring for lack of attention. However, a withdrawal usually indicates a legal fight has taken place, and the applicant settled the matter by withdrawing its application. This is a big red flag.
Even after clearing the above hurdles, you need to do, or have a professional do, a proper trademark search to determine if Zomboid is currently registrable. Are there other similar trademarks that have been filed in the meantime, which may be considered “confusingly similar” by the USPTO? This would include Zombie Boy, Zom-Boyd, Zomboy, Zombie-Oid and other variations.
Dead Trademark Registrations
What about actual trademark Registrations that are marked as Dead? Usually, these are noted as Canceled, and that usually means they were not properly renewed.
In many cases, however, the trademark owner does not even know the trademark has been cancelled. The USPTO sends only a single courtesy reminder of renewal to the last address on file.
Many a trademark owner has been horrified to find his/her trademark has been canceled and rushes to file a fresh application. So your Zomboid application could be formally opposed by the original owner of the cancelled trademark on the basis of earlier use and/or a failure to renew on time.
However, the Registration might also be canceled because another party filed a Cancellation Action against it. Tread with extreme caution over these gravesites! Often in these cases, someone wants this trademark, or something similar, very badly.
A recent example of how a Zombie Trademark can still live and walk among us occurred last year. A company called Strategic Marks LLC sought to file trademark applications for long abandoned Macy’s trademarks. The matter was finally resolved after Macy’s sued, by a court-ordered settlement.
Macy’s was allowed to keep some of its heritage brand marks, including Marshall Field’s, on the basis that the public still had residual feelings and recognition of them, and could be confused into thinking that Macy’s itself was re-opening stores under this name. Marshall Field’s is therefore a true Zombie Mark, walking again after 15 years of abandonment by Macy’s.
Normally, three years of non-use is considered legal abandonment of a trademark. Strategic Marks LLC still managed to secure trademark rights to Bullock’s Department Store and May Company, among others.
Thus you need to play detective to figure out if you can use and register a trademark without a legal challenge. Start by investigating the USPTO file; find out all you can about the reason the trademark application or registration was abandoned or canceled.
Then do even more due diligence: search the previous owner’s website, do a Google search, an Amazon search and all other Internet searches that may reveal you more information about the trademark and who may be using it now. Lastly, obtain a professional search opinion as to whether the trademark you want is now registrable in the USPTO.
Written by Sylvia Mulholland
Law Offices of Sylvia Mulholland