Can You Register an Expired Trademark?

A trademark is important for your business because it protects your business name, logo, or whatever else you choose to trademark. Putting a trademark on an item makes it your intellectual property, and as the official owner, you get a number of rights. These rights are legally binding and enforceable upon any infringement by a third party.

Trademark rights, however, don’t last indefinitely. To sustain the exclusive right to the trademark, you need to renew the right, depending on the number of years stipulated by the governing law. The renewal process helps to inform the commission (Registry) that the trademark is still in use and to prevent others from registering the same or similar trademark in the same class of trademark.

Thus, keeping a record of the expiration date is one step in the right direction to ensure you continue to enjoy the right. But then, what happens if the trademark is allowed to expire? Can you register an expired trademark?

What happens if you let a trademark expire?

An expired trademark is considered a “dead” trademark, and a “dead” trademark means that the owner of the trademark will seize to enjoy any legal rights associated with the trademark. To ensure that you’ll continue to enjoy the rights associated with a trademark, keep a close eye on the trademark’s expiration date. Some countries require that a trademark registration be renewed after seven years, others after ten years; ensure you have the details at your fingertips.

Can you register an expired trademark?

If a trademark has expired, you can register the expired trademark to regain the right to the trademark. However, it is important to note that during the period the trademark is listed as a dead trademark, the owner doesn’t have any legal rights to the item. This means that anybody is free to use and register the item as a trademark, thereby taking over the legal rights of the trademark.

As stated earlier, a registered trademark cannot last in perpetuity except if it’s renewed prior to its expiration date. Without this, you’re sure that your cherished trademark is headed for expiration and will be considered abandoned.

For example, in 1876, the “Bass Pale Ale Red Triangle” became the first trademark to be registered in the UK and has remained valid for 146 years since its registration. This is because the trademark is renewed every 10 years according to UK trademark law through the Intellectual Property Office (IPO). In the UK, once the 10-year period has passed and the name has not been renewed, it will expire and lose its protection as a trademark. However, a six-month grace period is granted to the owners to renew the trademark if they still want to retain ownership of the name. In renewing a trademark that has entered the grace period (six months after expiration), the owners are expected to pay an additional fee of £50.

If you’re not able to renew the trademark within the stipulated grace period of 6 months, the trademark will be considered “dead,” and once that happens, the owner of the trademark will not be able to renew the trademark.

How To Register a Dead Trademark

To register an expired trademark, you need to undergo three essential steps:

• Conducting a search: Registering an expired trademark is considered registering a new trademark. Consequently, the first step you need to take is to conduct a search in the trademark registry. This search is to help determine if there’s an existing trademark in the same class or a similar trademark capable of confusing the public. If the search proves that none of these trademarks exist, you can go ahead and make a formal application by filling out the trademark application form.

In your application, you must state clearly the class or classes of the trademark you wish to register. This is very important to avoid infringement.

• The next stage is acceptance or rejection of the application. If everything goes well, the reviewing officer will issue a notice of acceptance, meaning that your application to register the expired trademark is accepted, and the trademark will be registered.
• Publication and Certification: This is the last stage in registering an expired trademark. Before a certificate of registration is issued to you, the office will publish a notice in the trademark journal to notify the public of the intent to issue a certificate to certify that the trademark meets all requirements. The publication is to notify members of the public who may have any objections to why the name should not be registered. If there’s no objection, the certificate will be issued.

Note: This entire process can last up to four months if everything is done well.

Can you lose a trademark if you don’t use it?

Yes. The benefit of trademarking a mark is that it can be incorporated into your company’s overall branding needs. Trademarks are not meant to be stored in a box in the office but rather to be displayed in public to create brand recognition in the minds of the public.

However, if you choose to trademark an item and then abandon it for an extended period of time with no intention of using it again, you will lose the right to the trademark. In some jurisdictions, the abandonment period can last three years. Again, this may differ from one country to the next.

Final Thought

A registered trademark gives the proprietor a monopoly right to use the mark and to stop third parties from using or registering identical or similar marks on identical or similar goods and services.  A registered trademark can be a valuable asset for a business if used appropriately and kept valid and subsisting.

However, before registering an expired trademark, you need to understand that trademark registrations are territorial, meaning that the protection afforded to the trademark is covered by the country where you registered the trademark. So, if you wish to trade in another country, you should also consider registering there.