The Trademark Office Database is littered with abandoned applications and registrations. In the Trademark Office Database these abandoned applications are registrations are marked at “dead.” An application can be abandoned for any number of reasons, but the most common reasons are: (1) failure to file a response to an office action; (2) failure to timely a statement of use; and (3) express abandonment as part of a settlement. In the case of failing to respond to an Office Action or filing a Statement of Use, the applicant has two months from the notice of abandonment date to file a petition to revive. After that, there is slim to no chance of reviving an abandoned application.
The same is true on the registration side. Most registrations are surrendered for cancellation for failing to file the required Section 8 Declaration of Continuous Use or as part of a settlement. If a registrant fails to timely file the Section 8 Declaration of Continuous Use, there is a six month grace period during which the Section 8 can be filed. After that, there is slim to no chance of reviving an abandoned application.
Neither the Trademark Office during the examination of an application or the Trademark Trial and Appeal Board will give any considerations to “dead” records. In other words, no confusingly similar “dead” record will prevent the registration of your mark. So why are these “dead” records in the Trademark Office Database? It is because the Trademark Office has a rule that everything submitted to it will be made public, and nothing will be purged from that public record absent an extraordinary situation.
If the Trademark Office and TTAB give no consideration to “dead” records, then why should you consider them in a trademark search. The arguments in favor of reviewing these records: (1) it was just a mistake to miss a filing and the owner will revive; and (2) cancellation a registration or abandoning an application do not affect any common law rights.
With respect to the second argument, it’s true that common law rights are undisturbed. But if the reason for the cancellation is failure to file the Section 8, that means there is likely no use of the mark. Moreover, the cancellation means that the nationwide scope of rights revert back to being geographically limited. Therefore, depending on the business, the common law rights may not be an issue.
Most responsible trademark owners stay on top of the maintenance and filing deadlines or they have a law firm helping with this task. If a mistake is made, it is rare and corrected quickly. The more likely scenario is that the trademark owner has lost interest and is not that serious about its rights. This means a low likelihood of that prior trademark applicant or registrant coming out of the woodwork to oppose an application or petition to cancel a registration.
There is very little value in reviewing “dead” records in the Trademark Office Database, which why BOB filters this noise out of the search process and focuses only on what matters.