Last week, I enjoyed the privilege of returning to Iowa City (where it all began) for Executive Leadership Board Meetings at the University of Iowa College of Pharmacy. Great meetings there!
During a stroll through downtown, I was reminded of Deadwood, a legendary Iowa City tavern, so I snapped a few photos, having long forgotten the creative tagline — Institute of Higher Learning:
Deadwood has special meaning in the trademark world. A federally-registered mark no longer in use and legally abandoned, is considered deadwood, making it ripe for and subject to cancellation.
We’ve written before — here and here — about the challenges of trademark deadwood that face brand owners, and we’ve also highlighted the USPTO’s proposed help on the way, here and here.
Yet, until there is perfect alignment between every federal registration and corresponding actual use, the problem of deadwood will remain, even if it is less frequently seen by brand owners.
What we haven’t discussed much before is how to guage whether a registration is deadwood. The most common approach is to have a routine, professional, factual investigation conducted.
Turns out though, even reputable, professional investigations that reasonably seem to point to non-use and abandonment are not perfect, nor are they a guarantee of all the relevant facts.
For example, years ago, we received a petition to cancel our client’s federal trademark registration on abandonment grounds. Petitioner’s counsel was overly-confident in the assertion of non-use.
The investigation even noted that the mark no longer appeared on our client’s product packaging and labeling. Sadly for the Petitioner though, the mark was still in use on point of sale materials.
As a result, the matter resolved very differently than expected for Petitioner. Our client ended up selling the registered mark and receiving a royalty free license back to continue using the mark.
Back to the Deadwood mark shown above, technically it is not deadwood at all, first, because it is not federally-registered, and second, it is very much in use, posing a very different kind of issue.
Undoubtedly there are unregistered rights in the Deadwood mark, and the owner could come out of the woodwork to oppose or cancel another’s registration even up to five years after issuance.
Given the uncertainty of when and if the owner of an earlier unregistered mark wakes up to the importance of federal registration, it is pretty risky to ignore these kinds of uses during clearance.
Finally, given the uncertain and imperfect nature of trademark investigations, it’s best to think ahead and have some alternative leverage in mind before chopping at wood assuming its dead.