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Q: Use of expired Trademark ( Answered,   2 Comments )
Subject: Use of expired Trademark
Category: Business and Money > Advertising and Marketing
Asked by: googans-ga
List Price: $10.00
Posted: 18 May 2005 11:37 PDT
Expires: 17 Jun 2005 11:37 PDT
Question ID: 523002
Several years ago I used to work for a small company, let's call it
"Rotten Smelly Pies, Inc.", and the company had "Rotten Smelly"
registered with the US Patent and Trademark Office (USPTO).  Well the
company is no longer in businees, the corporation is listed as
dissolved in the state incorporation database, and according to the
USPTO the "Rotten Smelly" trademark expired over a year ago, and is
listed as "dead".

I now have my own company (let's call it "My Good Pies, Inc."), and
would like to register the "Rotten Smelly" tradename to use in my
advertising.  I would like to state in my advertising that I used to
work for Rotten Smelly Pies, along with the Rotten Smelly name, and
that I am now providing the same products and services that they used

So is it safe for me to assume that my use of "Rotten Smelly" is legal
and okay since they are out of business, and no longer have the
trademark registration?  Or is it possible that they may come after me
via legal action?
Subject: Re: Use of expired Trademark
Answered By: hagan-ga on 18 May 2005 12:57 PDT
As long as the "Rotten Smelly" people haven't used the mark in the
last three years, you should be okay.
"Q.: How is a trademark abandoned?
"A.: A trademark is abandoned, and the owner no longer has exclusive
trademark protection, if the owner of the mark deliberately stops
using the mark in commerce, makes no attempt to preserve the mark, or
fails to monitor proper use of the mark for a continuous period of
three years or more.
"Q.: What happens to a trademark once it is lost?
"A.: If the trademark is lost due to abandonment or non-use it becomes
available for a new owner to begin the registration process. If the
trademark becomes generic and enters the public domain it becomes
available for use by the general public."

The expired registration is not dispositive.  You don't absolutely
*have* to register a trademark in order for you to own it.  All you
have to do is use it regularly in your business.  However, it is
highly recommended that you do register it with the USPTO.
According to the USPTO, "[y]ou can establish rights in a mark based on
legitimate use of the mark. However, owning a federal trademark
registration on the Principal Register provides several
advantages...." including a legal presumption that you own the
exclusive rights to the mark.

So by allowing the registration to expire, they have lost the legal
*presumption* that they are the proper owners.  They can still prove
that they are the proper owners, however, if they can prove that they
have been regularly using the mark in commerce continuously for the
last three years or more.

Clarification of Answer by hagan-ga on 19 May 2005 12:25 PDT
I am embarrassed that I did not think of the "fair use" issue before
ipfan-ga brought it up.  Thank you, ipfan!
The case ipfan is referring to is Playboy Enterprises, Inc. v. Terri
Welles, et al. 162 F.3d 1169 (9th Cir., February 1, 2002), affirming
without commnent the District Court's denial of an injunction in
Playboy's trademark-infringement case against Terri Welles.  Ms.
Welles was describing herself as "Playmate of the Year," which Playboy
argued was a protected mark.  Playboy lost because Ms. Welles was
simply using the mark as an accurate descriptive.  The corollary in
your case would be your calling yourself a "Rotten Smelly" former
employee.  Sure you're using the name, but it's only in the context of
accurate nominative use.  That's not an infringement of the mark.

Nice concise description of the case here:

And the District Court's opinion here:

Thanks again, Ipfan.
Subject: Re: Use of expired Trademark
From: ipfan-ga on 19 May 2005 12:00 PDT
I agree with hagan-ga, but may I add a couple of points to address
your other questions,"I would like to state in my advertising that I
used to
work for Rotten Smelly Pies, along with the Rotten Smelly name, and
that I am now providing the same products and services that they used

That is a subtly different issue that is not fully addressed by the
presumption of abandonment that arises from a three-year period of
non-use.  That presumption can be easily rebutted by Smelly Rotten by
showing some/any use in interstate commerce in the last three years. 
Are you willing to gamble that they have made absolutely no use for
the last three years?  Remember--it is a rebuttable presumption of

That issue aside, under the law of trademark fair use (yes, trademark
law has fair use, too), you are free to use their mark in a factual
manner to describe the fact you used to work for them--even if they
still have a protectible interest in the mark.  I will look up and
post a link to the seminal Terri Welles case that talks about
nominative fair use later, unless someone else beats me to it.
Subject: Re: Use of expired Trademark
From: ipfan-ga on 19 May 2005 13:23 PDT
I always giggle whenever I use the adjective "seminal" to describe the
Terri Welles case . . .

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