What is a Zombie Trademark?

“The Zombie Trademark: A Windfall and a Pitfall” by Jerome Gilson and Anne Gilson LaLonde in INTA’s law journal The Trademark Reporter (R) Vol. 98 No. 6 (November-December 2008) defines Zombie Trademarks as trademarks that are unquestionably legally and factually abandoned.

DEAD trademarks at the USPTO do not have this meaning. At the USPTO, DEAD means that a particular application or registration is no longer pending and active but the reason may not be because it is legally and factually abandoned. A DEAD trademark might have a new life or may not have ever given up their previous life in commerce. Marks that are inactive for a particular good or service that may have a future life in the same or different good or service.

But watch out for deception.  If you intend to bring a brand back to life and try to deceive consumers into believing the same brand is back, the deception may come back to bite you.


Is the word ZOMBIE a trademark?

Over 500 trademarks have been applied for at the USPTO that contain ZOMBIE in them. ZOMBIE, like any other descriptive term, may be subject to a disclaimer requirement. As of  the last update to this page, the following applications and registrations contain the disclaimer on the word ZOMBIE.



































Dead and Abandoned Trademarks Can Become Zombie Trademarks

One can search for DEAD trademarks at TESS: Trademark Electronic Search System (http://tess2.uspto.gov/). TESS is for searching DEAD and LIVE, pending and registered USPTO Trademarks and viewing Trademark images.  

The best choices available for searching DEAD marks are: Word and/or Design Mark Search (Structured)  | and Word and/or Design Mark Search (Free Form)  | . If you are not familiar TESS, you may want to start on a Word and/or Design Mark Search (Structured).  

Most searchers don’t go looking for DEAD marks but if you want to: dead[ld] is the search term for a FREE FORM search combined with the rest of your search and in a Word and/or Design Mark Search (Free Form)  Search Term: Dead and Field: Live/Dead Indicator is how to search for just DEAD marks. On March 28, 2013 there were 3,965,346 DEAD marks. LIVE trademarks are used by trademark examiners to refuse trademarks which is as far as many searchers go. Is it far enough? Not Just Patents goes way beyond a direct hit search.


Why TESS? Many trademark search engines do not contain DEAD marks and many trademark services do not have DEAD or inactive marks in their databases (like LegalZoom, Trademarkia, others).

What is in TESS?  The Trademark Electronic Search System (TESS) contains the records of active (LIVE) and inactive (DEAD) trademark registrations and applications. Active or LIVE marks may be used by the USPTO examining attorney to determine that a "likelihood of confusion" exists. Inactive or DEAD marks may still be in use by the original applicants (who may still have common law rights) or the marks may be abandoned. See Can I Use An Abandoned Mark? For more information.

Why should I perform a search? One purpose of a trademark search is to help determine whether a “likelihood of confusion” exists, i.e., whether any mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark; and (2) used on related products or for related services.  Note that the identical mark could possibly be registered to different parties if the goods and/or services are in no way related, e.g., for computers and soft drinks.  WARNING: If your search reveals another mark that would definitely "block" your application based on the above standard, please note that if you file anyway, the filing fee is a processing fee that the USPTO does not refund even if registration of your mark is refused. Note that other reasons for searching exist, i.e., to determine if a potential trademark is inherently distinctive (see below).

Will my mark register if I do not find anything in TESS?  No, not necessarily. USPTO trademark examiners (attorneys) make decisions on whether marks may be registered on more than just a lack of “likelihood of confusion.”  After you file your application, the USPTO will conduct its own search and other review, and might refuse your mark, based on several different possible grounds for refusal.  Once you submit your application, the USPTO will not cancel the filing or refund your fee, unless the application fails to satisfy minimum filing requirements.  Filing an application does not guarantee registration.

How should I search?  A thorough complete search is one that will uncover ALL similar marks, NOT just those that are identical.  In addition to studying the marks, you must also closely study the listed goods and/or services to determine possible “relatedness.”  


What is the Effect of  Abandonment of A Trademark Application or Trademark Registration on a Trademark?

Note: Effect of Express Abandonment on trademark: TMEP §718.01(b) Rights in the mark not affected. Except as provided in §2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Office, affect any rights that the applicant may have in the mark in the abandoned application.

[Common Law rights are not effected by an abandoned application or registration but overall rights are effected. A registration on the Principal Register has many statutory presumptions under the law, even a Supplemental Registration has more rights than a common law mark. See Principal v. Supplemental v. Common Law chart.]


















[Trademark] Search Principles

(From the USPTO at http://tess2.uspto.gov/webaka/html/help.htm#FreqAske)

Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.

  1.     Conduct a Thorough Search.
  2.     Search All Forms of all the Distinctive Elements of the Mark.
  3.     Search Each Distinctive Element Alone.
  4.     Search Acronyms AND What They Stand For.
  5.     Search All the Legal Word Equivalents of Terms.
  6.     Search Component Parts of Individual Terms When Necessary.
  7.     Searches for Marks Consisting of Two or More Separate Terms Should be Conducted so that the Two Terms Would be Retrieved Whether They Run Together or are Separate.
  8.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
  9.     Search all Phonetic Equivalents
  10.     Search all English Equivalents


Can I Bring An Abandoned or DEAD Trademark Back to Life?

How risky it is to use a potential Zombie Trademark depends on the facts and if the trademark is still in use or if the previous owner intends to revive the trademark.  (Will the decision come back to haunt you?) A trademark examiner will not refuse a trademark application based on an inactive (DEAD) cancelled or abandoned trademark. The trademark examiner only is allowed to consider active registered trademarks and prior pending application in an ex parte proceeding (normal application process).

If the facts show that the trademark is abandoned or cancelled and the facts show that the owner of the abandoned or cancelled mark is no longer using the mark and does not intend to resume using the mark (a ZOMBIE TRADEMARK by our definition), someone else may be able to use the abandoned trademark. If the facts show that the abandoned or cancelled trademark is in one field, someone may be able to use the mark in another field even if the original owner is still using it. If the facts show that the prior user is still using the mark and that it is a famous trademark, famous trademarks get a wider scope of protection than other marks. Federal registration has a lot of presumption rights that are lost when a trademark registration goes abandoned and there may be room for someone else to register or use the mark.

What happens if I start using the mark or try to register the mark but the previous trademark registrant is still using the mark? The previous owner may still claim common law rights in a inter partes proceeding at the USPTO in a TTAB proceeding (opposition or cancellation) or may sue the new user or may never do anything. Some trademark owners are very litigious (not something that shows up in a basic trademark search) and have lots of time and money to oppose others. Trademark owners that have famous trademarks or think that they have famous trademarks may be more likely to take action against someone using their mark. Since TTAB proceedings are not searched by most trademark databases this information would not show up on most trademark searches but it is part of a Not Just Patents 5 Step Verification.

Why the mark is DEAD may give some clues about whether or not the mark is available along with researching advertising and web sites for use. One reason for a mark to go abandoned and become a DEAD mark is failure to complete the application process or failure to complete the process correctly or FAILURE TO TIMELY FILE REQUIRED DOCUMENTS. Current Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. Did they start using the mark and just not file the Statement of Use or did they give up on the mark? While someone else may apply for a mark that is DEAD, that does not mean that the mark is safe for anyone because the mark may still be in use even if not registered. It may however mean that the mark may register for the new user if the previous owner is not monitoring pending marks and did not oppose during the Opposition Period after the mark published for opposition or the previous owner did not attempt to cancel the mark. Trademark examiners do not and cannot take DEAD marks or common law marks into account when searching for Likelihood of Confusion conflicts with pending or registered mark. The owner of the DEAD or common law marks would have to pursue stopping the application themselves through an Opposition process, Cancellation process or in court.


Another reason for a DEAD mark is: “Current Status: Abandoned because the applicant failed to respond or filed a late response to an Office action” may mean that the mark was merely descriptive, had an inadequate specimen, had a likelihood of confusion with pending or registered marks or other reasons. The mark may be abandoned by the owner or the owner just did not competently answer the refusal or is no longer using the mark.


DEAD Trademark Applications or Registrations (Third Party Marks)

Use In Response to Office Actions, Oppositions or Cancellations

It is common practice in response to refusals, in oppositions and in cancellations to introduce third-party use of trademarks to demonstrate that a mark is weak and, therefore, entitled to only a narrow scope of protection.  ROCKET TRADEMARKS PTY LTD. v. PHARD S.P.(TTAB 2010). DEAD applications or registrations are of not probative in this context ( IN RE KYSELA PERE ET FILS, LTD. (TTAB 2011)) and cannot be used to show third party use because a DEAD, cancelled or expired application or registration is only proof that an application was made.

Third party registrations are not evidence that said marks are in actual use, their existence indicates the terms may be recognized as having some significance for a particular trade. Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588, 592 (TTAB 1975) (the third-party registrations may be considered in the same manner as a dictionary to show a possible meaning or significance in a particular trade). The fact that the USPTO has allowed so many registrations containing a shared term may be used "to establish that [the] portion common to the marks involved in a proceeding has a normally understood and well-known meaning [and] that this has been recognized by the [USPTO] . . .; and that therefore the inclusion of [the shared term] in each mark may be an insufficient basis on which to predicate a holding of confusing similarity." Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406 (TTAB 1988).

Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services.



ZombieTrademark.com

Tie It Up

Securing the Right IP

 

Trademark Rights

Principal v. Supplemental v. Common Law

Principal Register

Supplemental

Register

Common Law

Bring infringement suit in federal court based on the federal registration

YES

YES

NO

Can be used by trademark examiner against future applications of confusing similar marks

YES

YES

NO

Mark is easy to find for search reports

YES

YES

NO

Owner can use ® to symbolize federal registration

YES

YES

NO

Incontestability of mark after 5 years

YES

NO

NO

Statutory presumption of validity

YES

NO

NO

Statutory presumption of ownership

YES

NO

NO

Statutory presumption of distinctiveness or inherently distinctive

YES

NO

NO

Statutory presumption of exclusive right to use the mark in commerce

YES

NO

NO

Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods

YES

NO

NO

Ability to bring federal criminal charges against traffickers in counterfeits

YES

NO

NO

Use of the U.S. registration as a basis to obtain registration in foreign countries

YES

NO

NO

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Facts Matter

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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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Serial Number

Registration Number

Word Mark

Live or Dead

1

86149030


URBAN ZOMBIE

LIVE

2

86002755

4612204

ZED  THE ZOMBIE

LIVE

3

86002494

4612203

ZOGBIE  THE ZOMBIE DOG

LIVE

4

86008538


ZOMBIE HUNTER  NETWORK

DEAD

5

86381737


ZOMBIE CAFE

LIVE

6

86349027


ZOMBIE GARAGE

LIVE

7

86108377


ZOMBIE STAMPEDE

LIVE

8

85857667


ZOMBIE CUPCAKE  ATTACK

LIVE

9

85876812


ZOMBIE WHISPERER

LIVE

10

85643384

4268303

PARALLEL ZOMBIES

LIVE

11

85973707


TRAILER  PARK ZOMBIES

DEAD

12

85943296


ZOMBIE CAKEZ

LIVE

13

85776600


ZOMBIE POWER

LIVE

14

85976961

4192056

ZOMBIE CAFE

LIVE

15

85892676

4439439

ZOMBIE BUDDY

 KEYCHAIN

LIVE

16

85870336

4544637

FAMOUS ZOMBIES

LIVE

17

85782235


ZOMBIE DEATH  RACE

DEAD

18

85748992


ZOMBIE BUSTERS

LIVE

19

85675737

4481894

BATH  SALT ZOMBIES

LIVE

20

85670902

4327283

ZOMBIE TAG

LIVE

21

85575262

4243839

BOX  O ZOMBIES

LIVE

22

85404707

4377030

S.L.U.G. ZOMBIES SCARY

 LITTLE UGLY GUYS

LIVE

23

85353911

4290909

ZOMBIE AMMO

LIVE

24

85334651


GUERRILLA ZOMBIE OPS

DEAD

25

85330849

4163485

HOUSTON ZOMBIE WALK

LIVE

26

85183541


ZOMBIE LANE

DEAD

27

85045343


ZOMBIE CAFE

DEAD

28

78845562

3148821

MARVEL ZOMBIES

LIVE

29

77814020

3777363

ZOMBIE LOVE

LIVE

30

77931100


ZOMBIE UNIVERSE

DEAD

31

77756201

3739375

ZOMBIE CON  X MILWAUKEE 29852346667294639

LIVE

32

77022910


CHOPPER ZOMBIES FROM  HELL

DEAD