Hello.
There is a competitor in the US selling on Amazon using their inactive trademark.
Can I register the same trademark under the same class? If so, can I prevent them from using the trademark?
Is this legal?
If a competitor’s trademark is inactive in the U.S., you may potentially register the same trademark under the same class if it is legally deemed abandoned, and you can demonstrate no likelihood of consumer confusion. However, merely being inactive does not necessarily mean the trademark is legally abandoned; this depends on factors like the length of inactivity and intent to resume use. If you successfully register the trademark, you may gain certain rights to prevent others from using it, depending on the extent and validity of your registration. It is advisable to consult with an intellectual property attorney to assess the trademark’s current status, evaluate legal risks, and ensure compliance with trademark law.
From ChatGPT:
Yes, it’s sometimes possible to register a “dead” or “abandoned” trademark, but it depends on a few factors. A dead trademark generally refers to one that is no longer actively registered or in use. Here’s how it usually works:
1. Check for Abandonment or Non-Use: A dead trademark means it is no longer protected, but it may still be in use by someone else in commerce. Just because a trademark is listed as dead in the U.S. Patent and Trademark Office (USPTO) database, for example, doesn’t mean it’s automatically available. You would need to check if anyone else is using it.
2. Apply for Registration: If the trademark is genuinely abandoned (meaning no one else is using it in commerce), you can apply to register it as your own. The USPTO or relevant authority will review your application to ensure it meets all requirements, including proving that you intend to use it in commerce.
3. Risk of Opposition: Even if a trademark is dead, the original owner (or anyone else) could challenge your application if they believe they still have rights to it. Also, if the original trademark has strong recognition, it may be harder to use it without confusion.
4. Legal Advice: Consulting with a trademark attorney can help confirm the availability of the dead trademark and increase your chances of successfully registering it.
So, while it’s possible to register a dead trademark, it’s wise to conduct a thorough search and consider potential opposition.
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Yes, you can always try and register a dead trademark. However, from my experience, the trademark examiners in the United States are especially strict. They will most likely seek to suspend your application and significant financial resources will be needed to pursue it and establish that you have the right to obtain the mark for yourself.
Even though the mark is already dead, you would need to sufficiently prove that you used it and that you are entitled to its registration.
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