OtherGround Forums Registering a Company's Expired Trademark

Edited: 8/7/16 11:29 PM
Posts: 54117

Can any IP lawyers help me with this?


I have found an expired name that I believe I can register as it hasn't been registered since 1985 and is listed as Lapsed/Not Protected, but I'm not 100% sure if I can be sued?


For the sake of the question, let's say the expired trademark is for 'Jimmy Smith's Lawn Mowers'  which the company stopped using in the mid 80's and changed to 'Smith's Lawn Mowers'. but in the late 80's the company went broke and the name was acquired by another company who left 'Jimmy Smith's Lawn Mowers' inactive and didn't register it. Under the 'Smith's Lawn Mowers' name they use a very similar logo to the old brand, but not identical.


If I go and purchase the expired trademark, can the owners of 'Smith's Lawn Mowers' do anything legally to stop me from using their original but now unprotected name 'Jimmy Smith's Lawnmowers'?


The other thing to mention is that I am in Australia, and the trademark I'm referring to was US based. 


Any responses are welcomed.


Edited: 8/8/16 8:47 PM
Posts: 54118

So anyway, I've done a bit of research into this now and it appears that all I have to do is start using the name and advertise it so that it's documented, and I have more claim to the trademark that anyone else, even without registering it. Kind of like a legal version of finders keepers, or squatters rights.


I think I will do this to begin with and see what happens. Surely the worst that can happen is a cease and desist letter.

8/11/16 12:01 AM
Posts: 8624

Not a trademark expert, but I have done some IP work related to trademarks and IP (software).


Registering the trademark may be beneficial. At the very least, if it's registered, it's easy to prove the dates when you used it. Also, in the hierarchy of rights that will be debated, you will have a government-recognized right, which also helps in legal arguments. Finally, if you don't trademark and then someone else comes along and does, they may snake the name from you.