Trademark for dissolved company

[bornagaintrader]

I'm interested in acquiring an expired domain that belonged to a company which is now dissolved. The company was dissolved a number of years ago and it appears the trademark was finally granted several months before the company was dissovled.

Does the fact that the company has been dissolved have any bearing on the TM?

 

[Theo]

Is it a US trademark? A trademark is live until it expires. Other than that, whether anyone representing a dissolved company can stake claims in a tm that's questionable and should be answered on a case by case basis by an IP attorney.

 

[bornagaintrader]

Thanks for the reply, it is a US trademark and the company was registered in Delaware (not sure if that has any bearing on the dissolved status).

 

[Theo]

It depends on how was the company dissolved. It could have been a transformation into another company, a chapter 11 liquidation etc. You need to get answers from an IP attorney who would examine the facts.

 

[EnricoSchaefer]

You take an assignment of the trademark rights. However, you might not need to do so if the trademark is abandon. It might be cheaper to file a petition to cancel. There are also limits to whether you can take an assignment and still get the benefit of the older 'first use' date by the current registrant. You typically can't change the goods and services related to a trademark and still be valid. When assigning an interest in a trademark, if the associated product or service is not transferred with it, then this may be an "assignment-in-gross" and could lead to a loss of rights in the trademark.

These are always fact specific issues with multiple possible approaches.

Feel free to give me a call and discuss if you need some guidance. Here are some articles which might get you going in the right direction:

Trademark Assignment: Sales or Transfers

 

[Theo]

Enrico, I don't believe that the OP is interested in the tm itself but rather, if it's "orphaned".

 

[jberryhill]

Enrico, I don't believe that the OP is interested in the tm itself but rather, if it's "orphaned".

...the quotes around "orphaned" being the key point there.

Assets don't disappear, they go somewhere.

The real question, as Enrico mentioned, is whether the mark is abandoned.

Regardless of how long the registration lasts, the underlying mark may have been abandoned. A mark is presumptively abandoned after three years of non-use. That can be countered if there remains an intent to use the mark - i.e. you could have stopped using it for re-tooling, product development activities, or some other manifestation of intent. Less than three years, and the burden is on the claimant to show there was an intent to abandon the mark.

Getting back to your "orphaned" point - if it doesn't appear that anyone cared what happened to the rights, regardless of whence the rights may have devolved upon dissolution of the company, that lack of caring where the rights went, could itself be evidence of an intent to abandon the rights.

 

[Theo]

From my understanding, the mark is still active and has not expired nor it has been abandoned (I thought abandoning a mark only refers to giving up the process before the mark is registered?) and that the company that seems to hold the rights to the mark has been dissolved.

There is a case that I looked into, where a mark is pending approval for several years, because a similar registered mark that belonged to an extinct company is still active. In that case, the USPTO responds every 6 months postponing the mark's registration until the other mark expires.

 

[EnricoSchaefer]

There are a significant number of registered trademarks that are not valid for one reason or another. But abandonment is high on the list of reasons. many start-up and existing companies fail. But there is no automatic update to the USPTO trademark database. Rarely do these failing companies file paperwork indicating that htey are abandoning the mark.

 

[Theo]

If the corporation holding a mark has been dissolved, wouldn't the mark let expire unless explicitly abandoned?

 

[actnow]

There are 2 sides to every discussion.

When a mid to large size company desolves and there are creditors,
The creditors committee consider the TM an asset.
And, they consider that asset theirs to control and protect.
Many times they attempt to sell that TM.
And, there are companies that will buy them for pennies.
Possibly, the new owner hasn't updated USPTO.

Naturally, the creditors will consider the TM active and enforceable.

And, the byproduct of the TM is the domain.

The solution is to not use the domain in the same class as the TM until
you know more.

E and J are the legal "pro's" .

I'm only offering my suggestion from my years in the corporate world.

 

[bornagaintrader]

Thanks very much for the detailed replies. It's clear that it's far from clear cut.

@Enrico - I'm not buying the company, simply their domain which is being auctioned by their registar (so there is no implicit approval from them to assign the TM). As far as a petition to cancel a TM, is this likely to be a lengthy/expensive process?

@jberryhill - As far as showing non-use throught abandonment is concerned, is it fair to determine non-use from the moment of dissolution of the company.

@actnow - I think that given it's a failed startup, not sure how I would find out if there are any creditors and whether they consider there is value in the TM. It's further complicated by the fact that if I approach them for the TM, that interest would automatically assign value to something they may have otherwise overlooked.

 

[jberryhill]

@jberryhill - As far as showing non-use throught abandonment is concerned, is it fair to determine non-use from the moment of dissolution of the company.

It is fair to determine that non-use has begun when the domain name stopped being used.

Acro - No. When you see "abandoned" in an application record, that is a reference to abandonment of the application. Whether there is a mark, or whether the mark has been abandoned is an orthogonal question to whether the application was abandoned.