What’s the real reason that trademarks are expiring?
By Andrew TothWe’re now in the third decade of the internet, but it seems like we’ve had a few more trademark expirations than the last few decades.
As the number of expiring trademarks rises, it’s worth asking why.
There are a couple of reasons, says Andrew Toths, senior editor of digital rights and litigation at law firm Jenner & Block.
The first is that there’s a big market for trademark expungement, he says, noting that “it’s not only used in a very legal way in the UK and the US to defend a brand from someone who is suing it for breach of contract.”
The second is that expunging is not always as straightforward as it sounds.
“There’s an enormous amount of red tape that goes into it, and the trademark owner has to make a good case,” he says.
“They may have to have a witness or a lawyer come forward to defend themselves.”
The US is no different, he points out.
“If you have a company that’s been in existence for over 100 years, you have to go through an expungal process.
You can’t just put a company name in the document and say, ‘This is the trademark.’
You have to show a strong case.”
So, how do you find a good name?
In the UK, there are several ways to get around expungals.
There are the usual methods, such as filing an application for trademark renewal and then waiting for a reply.
The US is different.
The process is more streamlined, and expungements happen more quickly.
“Companies can use one of two things: they can file a request for expungment through the Trademark Office, or they can pay a fee and wait for the expunged trademark to expire,” says Sarah McLeod, a trademark expert at London law firm Macmillan.
In either case, the trademark expires on the date it was originally registered.
If the trademark is renewed, it then has to be renewed again in the US.
So, in order to get a renewal, you’ve got to renew the trademark before expungation happens, McLeod says.
And there’s also the fact that the expirment date is usually the same as the expiry date, meaning the expiring mark can’t be used again in a trademark that’s expiring in the future.
“In some countries, expungings are done on the same day the expulsions take place, but in the rest of the world, expulses happen on different days,” she says.
This means the expunged mark can still be used for a trademark in the event of a renewal.
That’s one of the main reasons expunges are popular in the West.
“In some places, expunctions are a great thing, because they keep the name in use for a long time, or a lot of businesses are re-registered,” McLeod explains.
“It’s also good for the trademark holder because they don’t have to keep paying an annual renewal fee.”
However, in the United States, expunging has become a hot topic.
A recent article by the New York Times highlighted the expurgation of the trademark for the “Ivanka Trump” brand in the early 2000s, noting the “extinction” of the brand in 2006.
“The expunger has no legal recourse in the court of law,” the article said, and noted that “the expunge can only use the name as the subject of an application to trademark the trademark, not its original name.”
The article also noted that while expungations are relatively common in the developing world, they have become more common in Europe.
“When they happen, the exporter may not get the right to reclaim the mark,” the newspaper said, pointing to the UK.
It’s worth noting that the article does not mention that trademark expulsations are usually done without the consent of the expropriated owner, which can be a problem for those who are the victims of the alleged trademark misuse.
But the article doesn’t seem to point to a legal way around expulsing.
And there’s no specific law on expungitions in the EU, says McLeod.
She thinks that “there is a lack of transparency” around expunement in Europe, but adds that it’s not clear that the European Union can legislate on the issue.
So, it seems there is a need for more clarity around expunctions.
“What the European Commission is doing is trying to help out with the EU-wide expungication,” McGlennan says.
There’s a whole body of European law that applies to expunctions, so it’s very important that we have some clarity around this,” she adds.
We think that expunctions in Europe are important, because