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.

For the purposes of this web site, we are going with DEAD trademarks that might have a new life or marks that are inactive for a particular good or service that may have a future life in the same or different good or service. Watch out for deception. There are lots of legal issues that Gilson and LaLonde cover in the article that you may want to study if you intend to bring a brand back to life and try to deceive consumers into believing the same brand is back.


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.  

There 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? The USPTO cannot provide guidance as to how you should search, beyond the linked HELP provided at the top of the first page of the TESS site.  However, you must understand that a 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 affected 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.


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ZombieTrademark.com

Trademark Rights

Principal v. Supplemental v. Common Law

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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

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YES

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Mark is easy to find for search reports

YES

YES

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YES

NO

NO

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YES

NO

NO

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YES

NO

NO

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YES

NO

NO

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YES

NO

NO

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YES

NO

NO

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

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

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Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

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Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog

How To Answer A Trademark Cease and Desist Letter

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

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

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

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

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

Merely Descriptive Trademarks  

Merely Descriptive Refusals

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

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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