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I recently stumbled upon a product patented in the 1950's--let's say it's a beard comb called the "Drongle"

After the patent expired, another company trademarked "Drongle" in 2006 and began selling the beard combs.

In 2013, the new manufacturer's "Drongle" trademark was cancelled--although they still manufacture and market their beard combs under the same name.

Two questions:

*Is it permissable to manufacture beard combs and market them under the "Drongle" name?

*If so, should I file for a trademark on the name "Drongle?"

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Registered Trade Marks aren't the only form of trade mark protection. You also have the law of unregistered trade marks.

Basically (and this is an over-simplification), it works like this:

  1. a business starts using a trade mark for a specified product: beard comb. Let's say that they don't even register a trade mark.
  2. they start selling load and loads (thinks 100s of thousands of $ or £ worth)
  3. they become well-known in that market segment. They accrue "goodwill" in the (unregistered) trade mark.
  4. That trade mark is protectable in law.

That's a summary of the law of passing off aka the law of unregistered trade marks.

So, if the new manufacturer is still manufacturing them in the country that you want to sell them in, you'll probably have a problem. This assumes that that country has an equivalent of the law of passing off.

The tip then has to be - check to see if the manufacturer is still selling them.

If you think it's a good business opportunity and worth a small amount of risk capital - a few hundred $ or £, file the trade mark application is see if anyone does anything about it. You can always withdraw it and avoid a dispute.

You might also do a search for registered design rights. They protect the shape of the products (not what it's called - which is what a trade mark does).

  • Thanks for this. What I'm trying to understand is whether the brand has been diluted enough--by two different companies selling the same product under the same name for 10+ years--that it's now a noun (like escalator or elevator). Is that likely? Or because they sold at different times, could the trademark have moved from the first manufacturer to the second intact? – Zack Jan 25 at 15:37
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    If a "brand" (trade mark) isn't used for about two years in the UK, the goodwill has usually dissipated adequately (the former business using it no longer owns adequate goodwill). If two business are using the same trade mark in the same country, neither can own the goodwill. Goodwill is distinctive of a single business, not more. – lellis Jan 25 at 19:23

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