# Trademark is DEAD 3 years ago and No business name



## Itsallaboutp (May 5, 2015)

I want to trademark a name and it is dead as of Jan 2012 I also searched to see if they are doing business with the name by searching business names database and nothing showed up for that name. Just similar names but not that one. And searching twitter and other social media it is being used by just regular person not a business. I will contact lawyer but was checking here first before paying thanks


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## kimura-mma (Jul 26, 2008)

If it's dead, it's dead. Best to consult the attorney too, though.


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## ShirlandDesign (Nov 29, 2009)

How and why do TM's die?


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## kimura-mma (Jul 26, 2008)

Usually, the applications are abandoned before the mark ever gets registered.

All TM info is public record. You can search the database for any dead trademark and see exactly why it's dead. Again, it's usually paperwork-related.


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## binki (Jul 16, 2006)

Dead is dead, we obtained a TM the same month a similar Mark that was blocking us went dead for failure to file an extension


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## Itsallaboutp (May 5, 2015)

After doing some research I found out that one of the TM I am trying to file for has been abandoned because he went to court someone filed because they said the name was similar to theirs and would cause confusion. As of April of this year he abandoned the TM not from judge but I think because no response. It's strange because the other name had nothing to do with clothing. 
The second TM I researched was abandoned 2012 this is what it said 

"Status:	Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.
Status Date:	Jan. 02, 2012"

So I think I can use this one. I will talk to legal zoom


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## Itsallaboutp (May 5, 2015)

Is it possible to see if a trademark is being filed? Has anyone been turned down? I think it's crazy if you pay to file and they deny it. I think you don't get your money or even get a second chance.


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## Itsallaboutp (May 5, 2015)

After more research I found out that the one abandoned this year made the right choice lol there were multiple TMs for the other company which is a huge company. I was only looking at one of their TM now all of them came up. Which shows you try different spellings in your search.


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## Celtic (Feb 19, 2008)

Hmmm, I'd be concerned though, that that the company that went after the last owner of the TM will also go after you for the same reasons. 
Something to think about.


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## kimura-mma (Jul 26, 2008)

Itsallaboutp said:


> Is it possible to see if a trademark is being filed?


When you search the trademark database, the results include registered trademarks and applications that are in process but haven't been approved yet. All applications get a serial number; only approved trademarks get a registration number. So any LIVE result in your search that doesn't have a registration number, is likely a pending application.

I don't believe the database updates in real time, so I'm sure there is some type of lag between the time someone files an application and the time it appears in the database. There is no way, as far as I know, to see a trademark that has been filed but hasn't been uploaded to the database.



Itsallaboutp said:


> Has anyone been turned down?


It probably happens all the time for a variety of reasons. Similar marks, a mark being too generic, etc. Many people probably fail to do their due diligence before applying for a trademark.



Itsallaboutp said:


> I think it's crazy if you pay to file and they deny it. I think you don't get your money or even get a second chance.


Unfortunately, there is some risk involved. But it's not as bad as you suggest; it's not like they take your money, say "denied" and that's the end of it. Upon the initial search, they send you the results along with any potential issues or conflicts and give you the opportunity to proceed or amend your application. Sometimes, amending the application has an additional fee - but it depends on what you need to amend. The examining attorney assigned to your application is there to help. You can contact them at any time.


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## Itsallaboutp (May 5, 2015)

Celtic said:


> Hmmm, I'd be concerned though, that that the company that went after the last owner of the TM will also go after you for the same reasons.
> Something to think about.


I am not going with that TM I am going with another.


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## Itsallaboutp (May 5, 2015)

Good to know they just don't say denied and move on. But still does not mean you can back out and get your money back which would be great. As far as them letting you know about conflicts or issues I am sure its not going to be something you can change like the name. Thanks


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## Itsallaboutp (May 5, 2015)

Hello, here is more details the trademark is marked "abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued." does this mean it can be registered by someone else? It has been dead since Jan 2012 over 3 years ago. Also in Prosecution history in documents it says abandonment notice mailed - No use statement filed. thanks


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## binki (Jul 16, 2006)

go for it


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## Itsallaboutp (May 5, 2015)

I will. I wonder if I can obtain twitter name and instagram or even website name.


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## kimura-mma (Jul 26, 2008)

Yes, it can be registered by someone else. I echo binki... go for it.


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## Itsallaboutp (May 5, 2015)

Ok I am going to do it myself its pretty expensive to do it with a lawyer or legalzoom


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## binki (Jul 16, 2006)

Itsallaboutp said:


> Ok I am going to do it myself its pretty expensive to do it with a lawyer or legalzoom


It will be less expensive if it gets denied or challenged in any way. Just a word from someone who has been there.


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## Itsallaboutp (May 5, 2015)

binki said:


> It will be less expensive if it gets denied or challenged in any way. Just a word from someone who has been there.


You mean less expensive if I go through a lawyer and it gets denied? Or are you just saying...


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## Itsallaboutp (May 5, 2015)

If something goes wrong and I need to reply to them can I get a lawyer or legalzoom after the fact?


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## Itsallaboutp (May 5, 2015)

Just spoke with legalzoom for about $444-464 they will do everything. They said after seven days they will get back to me and tell me if it is ok to register or if I might run into some issues. I then have a choice to say go or no go. And get 100% refund. What do you guys think should I go ahead and use them or do it myself. I asked them if I can register and they said based on what I told them about it being abandoned I should be able to file. So if that's the case why not just do it myself? It's about $200 in NYC to register I can save that extra $200 and use it for llc or corp filing I didn't want to ask about doing it myself and then coming to them if I needed help answering letter if something went wrong. I have searched and I do not see this name being used and someone registered the domain but it didn't even come up it is just used for bs ads


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## kimura-mma (Jul 26, 2008)

It's really up to you. If you feel like you can do it yourself, then go ahead. If you want the peace of mind, let LegalZoom do it. You will still have to answer LegalZoom's questionnaire, which is mostly the same info you would provide to the USPTO yourself. The biggest value in using LegalZoom is that initial search they do for you. Is that worth the extra $? Only you can answer that.

Not sure what you're reading about trademark registrations being $200 in NYC. The USPTO application fee is $275 to file online.


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## Itsallaboutp (May 5, 2015)

kimura-mma said:


> It's really up to you. If you feel like you can do it yourself, then go ahead. If you want the peace of mind, let LegalZoom do it. You will still have to answer LegalZoom's questionnaire, which is mostly the same info you would provide to the USPTO yourself. The biggest value in using LegalZoom is that initial search they do for you. Is that worth the extra $? Only you can answer that.
> 
> Not sure what you're reading about trademark registrations being $200 in NYC. The USPTO application fee is $275 to file online.


Yes my mistake it's $275 I am googling to find out what search they do to be so sure and if I can do that type of search myself.


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## binki (Jul 16, 2006)

Itsallaboutp said:


> You mean less expensive if I go through a lawyer and it gets denied? Or are you just saying...


Yes, we had to fight for ours.


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## Itsallaboutp (May 5, 2015)

Ok got it. I'm looking into a place that offers good support any suggestions? Legalzoom so far is my choice looking into nolo...


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## Itsallaboutp (May 5, 2015)

binki said:


> Yes, we had to fight for ours.


Did it cost you more than it would have cost if you went with an attorney to begin with? If I run into any trouble am I looking at more than $179 to fix the problem? Can I even get someone to handle it after the fact if I filed it myself? I am going to speak to a lawyer on Tuesday for free but I know asking this question he/she will probably tell me to hire one of them (who wouldn't try to convince you)


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## binki (Jul 16, 2006)

Itsallaboutp said:


> Did it cost you more than it would have cost if you went with an attorney to begin with? If I run into any trouble am I looking at more than $179 to fix the problem? Can I even get someone to handle it after the fact if I filed it myself? I am going to speak to a lawyer on Tuesday for free but I know asking this question he/she will probably tell me to hire one of them (who wouldn't try to convince you)


We used an attorney from the start. It took 30 months to complete.


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## Itsallaboutp (May 5, 2015)

I spoke with an attorney and USPTO from what I gathered I don't need a lawyer because it was registered already and should go through. The attorney said just sell under the name and trademark it later when you know you want to continue with the brand name and making money. 

What I forgot to ask was how do I prove how long I was using the mark? 
I also have the items with the name on the label which I will use as a picture specimen. I have been using the name and selling the items on my website which is a different brand name. I just bought a domain name to start selling the items on its own site. How did you guys prove and do they even check after you fill out the application or during the application.


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## kimura-mma (Jul 26, 2008)

You need to give a date of first use; but you don't need to provide proof of that date unless your ownership is even contested by someone else. So it's a good idea to keep a record of when you got your products made, including the shirts, labels, hangtags, etc. You should also keep a record of your earliest sales. It doesn't matter which website you sold them from; as long as you shipped the shirts featuring the trademark on the label or hangtag, that should qualify for proving use.


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## Itsallaboutp (May 5, 2015)

kimura-mma said:


> You need to give a date of first use; but you don't need to provide proof of that date unless your ownership is even contested by someone else. So it's a good idea to keep a record of when you got your products made, including the shirts, labels, hangtags, etc. You should also keep a record of your earliest sales. It doesn't matter which website you sold them from; as long as you shipped the shirts featuring the trademark on the label or hangtag, that should qualify for proving use.


I know I first started using in 2013 but didn't sale anything with the name until about 2 months ago when I started making the shirts for other people. Sold in person before selling online. So unless someone else comes and says they used it I would not have to show anything showing I started using in 2013? Because I don't know how to prove that. Thanks


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## kimura-mma (Jul 26, 2008)

Itsallaboutp said:


> So unless someone else comes and says they used it I would not have to show anything showing I started using in 2013? Because I don't know how to prove that.


That is correct.


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## Itsallaboutp (May 5, 2015)

kimura-mma said:


> That is correct.


Ok thanks I think I may be in luck just in case. I think I have receipt for samples made in 2012 not 2013 Thanks


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## Itsallaboutp (May 5, 2015)

Also guys only thing I have right now is website with the shirt showing price and add to cart option wtc no physical item right now until maybe two weeks when I get different products. Is that good for specimen it says it's good online but what's the best to use to show uspto?


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## kimura-mma (Jul 26, 2008)

Take a photo of a hangtag or neck label that features the trademark. Submit that photo as the specimen for proof of use.


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## Itsallaboutp (May 5, 2015)

kimura-mma said:


> Take a photo of a hangtag or neck label that features the trademark. Submit that photo as the specimen for proof of use.


I thought hang tags weren't good enough? I have flyers haven't ordered hang tags yet. Is there specific things hang tags need on it?


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## kimura-mma (Jul 26, 2008)

Nope, hangtags are good enough.

Since you are using the hangtag as proof of use for your trademark, it should have your trademark on it. Other than that, it's up to you. There is no legal requirement for hangtags. Do a Google Images search to see other brand's tags to get some ideas.


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## Itsallaboutp (May 5, 2015)

kimura-mma said:


> Nope, hangtags are good enough.
> 
> Since you are using the hangtag as proof of use for your trademark, it should have your trademark on it. Other than that, it's up to you. There is no legal requirement for hangtags. Do a Google Images search to see other brand's tags to get some ideas.


Ok thanks I actually used business cards as hang tags for my other brand and bought a 1/8 whole puncher to make holes. I got business cards from vista print. Anyone know great place for hang tags I see a bunch but just want a good reference based on quality and price


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## Itsallaboutp (May 5, 2015)

I was actually going to wait until I get the products and take a picture of the labels inside. But if hang tags are good enough I guess I will order them.


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## kimura-mma (Jul 26, 2008)

Then wait til you get the products and take a pic of the label. No sense in spending more money just for hangtags (unless you were going to order them anyway). You also don't need to submit the trademark application right away. Wait a while; til you're making money on the brand.


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## Itsallaboutp (May 5, 2015)

kimura-mma said:


> Then wait til you get the products and take a pic of the label. No sense in spending more money just for hangtags (unless you were going to order them anyway). You also don't need to submit the trademark application right away. Wait a while; til you're making money on the brand.


I was actually thinking about that but I was nervous someone might register and get it. Than I would be out of luck. Because from my knowledge if someone got the trademark and I challenge it I would only be able to sell in my state or where I do business. And they would have everywhere else correct?


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## kimura-mma (Jul 26, 2008)

If you can prove you used the mark first, you would be able to retail full rights to the mark even if someone else registers it before you.

If there are discrepancies on who used the mark first is specific markets, it's possible rights to the mark could be split. But that's getting way ahead of yourself.

Your main focus should be on selling product featuring the mark. Because 1) it makes you money; and 2) strengthens your rights to the mark based on use in commerce. Worrying about trademarks before you establish your business is not helping you.


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## Itsallaboutp (May 5, 2015)

Got it. That's what I was doing but I guess I'm nervous and trying to rush. I will continue to do what I'm doing and wait and see what I can do with the brand.


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## Itsallaboutp (May 5, 2015)

Also forgot to mention someone has the name of my brand as their domain but it is not being used no coming soon page just nothing no ads. When I get it trademarked can I get the site name from them because I have it trademarked? I might open another thread for this question if no one sees or to get it seem for better chance of getting answered.


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## kimura-mma (Jul 26, 2008)

Itsallaboutp said:


> Also forgot to mention someone has the name of my brand as their domain but it is not being used no coming soon page just nothing no ads. When I get it trademarked can I get the site name from them because I have it trademarked? I might open another thread for this question if no one sees or to get it seem for better chance of getting answered.


Trademark registrations and domain registrations are completely separate. One does NOT entitle you to the other. Claiming rights to a domain name based on trademark ownership is known as "reverse cybersquatting" or "reverse domain name hijacking." I wouldn't recommend this course of action. There are internet laws that would protect the domain owner. You could, of course, offer to buy the domain name. But you can't just take it from them; even if there is nothing on the current site.


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## Itsallaboutp (May 5, 2015)

About to receive my samples for clothing line if everything goes well will order 100 pcs. Should I register my trademark now? Or keep selling and see where this goes? Don't want to risk someone else getting the name but if they do it before me I can get it from them if I prove i've used it before them so what do you think?


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## kimura-mma (Jul 26, 2008)

Keep selling and see where it goes.


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## Itsallaboutp (May 5, 2015)

Hey lets say I have my brand and on the labels it says Brandx but I register to trademark Brandx Apparel would it get denied?


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## kimura-mma (Jul 26, 2008)

No, it wouldn't get denied.

The word "Apparel" is not distinctive; it is simply a description of the goods that "Brandx" makes and sells. So in the eyes of a trademark registration, the word Apparel is irrelevant. It's Brandx that is important. Unless there is a specific reason you want to register Brandx Apparel, you should really just register Brandx.


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## Itsallaboutp (May 5, 2015)

I am going to go ahead and file because I think it should do well. Plus I sold some stuff I wasn't using anymore to come up with the money for the fee. I've already spent a lot on getting merchandise made so why should I wait to see if it sells? I think knowing it is mine will make me work harder. Because not knowing if it will go throw I will be scared to keep spending money on it. I feel comfortable going ahead with the process. I have a lawyer who is going to do it for me. I was going to follow along a youtube video I found but got lucky someone will do it for me. It does look easy on the video but I'm going to let the lawyer do it instead.


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## teehugger (Jul 6, 2015)

one thing about buying a name though... research its footprint! if you're going to use it online, it's possible that the name has been search engine censored for "black hat" (sleazy) search engine optimization or has a bad reputation that could affect your business. you could be buying a load of baggage with the name. make sure it isn't tarnished or legally entangled.

otherwise, good luck with your brand


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