Entrepreneurship & Small Business

Trademarking an Expired Trademark name

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  • Jun 29th, 2020 5:53 pm
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Jul 14, 2019
26 posts

Trademarking an Expired Trademark name

I am currently registering a business name federally at the same time I also want to trademark the name. I did some research and found out the name was trademarked in 1980 and the current status is EXPUNGED in CIPO (Canadian Intellectual Property Office). So If I want to register a trademark name which was already trademark long ago but the current CIPO trademark status says "Expunged - Failure To Renew" And I see the record that it hasn't been renewed for 20 years. There is another technical term that I did not understand under the Disclaimer text and that is "The right to the exclusive use of the words ABCWORD and XYZWORD is disclaimed apart from the trademark." What does this mean? Those 2 words are my business name. Does it mean that name is free to trademark? If you don't understand any part of my question please ask me coz I find it pretty confusing. Thanks in advance.
2 replies
Apr 24, 2015
50 posts
Lancaster Park, AB
Well, I just successfully completed a trademark application of my own, and from the research that I had done, it would appear that if the trademark's status is EXPUNGED, plus it's been 20 yrs+, you can claim that name, no problem. At least there should be no objection in this case raised by CIPO examiner. As to the previous owner, well it's another story. It sort of helps if the company who owned the mark is no longer in business as in that case the chance that they're going to file an objection to your application becomes pretty slim. If they still are in business, they may challenge the application or go after you later once the mark has been registered claiming that because the mark has been used for a certain length of time, they now have rights under common law, regardless that the registration with CIPO has lapsed. It becomes a bit of a grey area and the success of such a formal challenge will depend on what supporting documentation they have to validate their claims.

Another thing to keep in mind, if your goods and services are totally different from what the mark was previously used in connection with, then you have nothing to worry about from the outset, your mark will go through the examination stage just fine for as long as all other conditions are met.

Finally, even if successfully registered, be prepared that your mark may be challenged at any time by pretty much anyone who's willing to pay the associated fee, about CAD $700, to initiate the so-called Section 45 proceedings. There are lawyers/LLP's out there doing just this sort of thing for a living and making good money on it, don't ask me how. The more attractive the mark, the higher the risk that some may attempt to snatch it in this way. Usually these proceedings come to noting if the mark can be proven to be in active use. But you still are obliged to provide all the supporting documentation at the formal hearing involving both parties, etc. Otherwise there's a real risk that some or all of the associated goods and/or services that you initially included in the application, but did not use the mark in association with (or you could not prove it), could be forcefully removed from the already successfully registered mark's description or you may even lose the trademark altogether i.e. it may be expunged for non-use. Goods are especially tricky compared to services when it comes to this type of formal objection/challenge as there are specific conditions that must be met as to how the mark is applied to goods/displayed on goods, etc. to satisfy the condition of the mark being in use in Canada.