Patent Attorney and Founder
Question: Can I take over the LLC name from my old motorcycle club? The club vacated their LLC six years ago and never renewed their trademark, which expired four years ago. I want to take it over. Can I do it?
Answer: Good question. My first question would be, is the motorcycle club still in operation today? Even though the federal trademark may no longer exist, they might have common law rights to that brand. If you file your own federal trademark, you might give them the ability to oppose your potential trademark.
So, the answer is likely yes, you can probably file a federal trademark, assuming that the name is distinctive, not descriptive, and not location-based. If it meets these criteria, the USPTO might approve it, just as it probably did six years ago. However, are you the rightful owner of that trademark? Probably not.
Claiming that it’s your trademark and that you’ve been using it for ten years, when maybe you haven’t and the other organization has, would be considered fraud on the USPTO. If you file, you would have to state that your first use is very recent. If the motorcycle club doesn’t have a website or any presence, you could file an intent-to-use application and submit proof of use later. But, this would still allow the original organization to come back and file their own trademark with earlier use dates.
My advice would be to get the approval of the motorcycle club to refile the trademark application. That would be the right way to do it.