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Name rights of a company that merged

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STEPHAN

Senior Member
About five years ago a company merged. Let us say their name was "Hammond Corporation". They were registered in DE and other states.

(It was not, just don't want to say there name here.)

They merged with another company, now have a different name. Their registrations under "Hammond Corporation" are inactive.

(Two years ago they gave up all their "Hammond" trademarks, actively canceled them.)

Just from these facts (having had the name) do they still have name rights?

Thanks!
 


FlyingRon

Senior Member
I'm not sure what you mean by "name rights." Corporate names generally only have protection against other corporations in the same state having the EXACT same name. If the state rules say that you can make a new company with that name, then you can.

Now if the name was used as a trademark, then you have another issue. Corporate names often are, but they aren't necessarily, trademarks. If the company was using the name as a trademark in commerce, then the successor companies likely have the rights. This means that you can't use a similar mark in a way that would rise to confusion in the marketplace (or in some cases dilute their famous mark).

I can't tell you anything specific since you haven't given much detail here. The only Hammon I am aware of is the Hammond Organ Company and they still are in business under that name.
 

quincy

Senior Member
About five years ago a company merged. Let us say their name was "Hammond Corporation". They were registered in DE and other states.

(It was not, just don't want to say there name here.)

They merged with another company, now have a different name. Their registrations under "Hammond Corporation" are inactive.

(Two years ago they gave up all their "Hammond" trademarks, actively canceled them.)

Just from these facts (having had the name) do they still have name rights?

Thanks!
A trademark is presumed abandoned when the mark has not been used as an identifier by the trademark holder for a continuous period of three years or more.

Although abandonment of a mark can allow for the potential use of the mark by others, the abandonment presumption is a rebuttable one.

The original trademark holder could be reorganizing his company/revising a product line/having temporary financial problems ...

Lanham Act section 1127: https://www.bitlaw.com/source/15usc/1127.html

Trademarks are used to distinguish one company’s goods and services from those of all others. Trademark law centers on the consumer confusion that can be generated when the use of the same or similar mark makes it difficult for a consumer to tell the origin of the goods/services being marketed.

It is almost always best to create your own unique mark.
 

FlyingRon

Senior Member
My point is ONLY regarding the rights coming from the former use of the company name.
Again, I'm not sure what "right" you're envisioning. Company names do not engender rights on their own. Q and I gave you a brief tutorial on trademark implications.
 

quincy

Senior Member
My point is ONLY regarding the rights coming from the former use of the company name.
For what purpose would you be adopting this former company name/trademark for use? Are you intending to use the name in the same way (for the same type of business/goods/services) as the former company used it?
 

STEPHAN

Senior Member
Thank you. I got my question answered.

For what purpose would you be adopting this former company name/trademark for use? Are you intending to use the name in the same way (for the same type of business/goods/services) as the former company used it?
Yes, using it the same way. They stopped using it in the US more than 5 years ago and canceled their trademarks. I bought all the trademarks outside the US a while back. There is nobody left that I can talk to.
 

quincy

Senior Member
Thank you. I got my question answered.

Yes, using it the same way. They stopped using it in the US more than 5 years ago and canceled their trademarks. I bought all the trademarks outside the US a while back. There is nobody left that I can talk to.
Okay. As long as you have made sure you are not infringing on existing rights, and you do not expect the original trademark holder has plans to revive the mark (and, therefore, challenge your use), the abandoned mark is (probably) something you can use to identify your own product/service.

I still recommend you create your own trademark.
 

FlyingRon

Senior Member
Yes, using it the same way. They stopped using it in the US more than 5 years ago and canceled their trademarks. I bought all the trademarks outside the US a while back. There is nobody left that I can talk to.
Bought trademarks from whom?
 

FlyingRon

Senior Member
All you bought was them not protesting your use. You don't get trademark rights yourself unless you are entitled to them under the law (use in commerce and the like). Your agreement with them will mean little to the government and not anything to others who might assert rights.
 

STEPHAN

Senior Member
All you bought was them not protesting your use. You don't get trademark rights yourself unless you are entitled to them under the law (use in commerce and the like). Your agreement with them will mean little to the government and not anything to others who might assert rights.
What? I had a license agreement for the last 20 years and was using the brand.

Now I bought all registered trademarks in EMEA. They are now transferred to my company.

Just to clarify, this is outside the US and not related to my original question.
 

FlyingRon

Senior Member
Again, a license only is an agreement between you and the original trademark holder. It doesn't mean anything otherwise. You can't "buy" trademark rights in general.

Your original question, vague as it is, has been answered several times. There's no such thing as corporate "name" rights.
 

STEPHAN

Senior Member
Again, a license only is an agreement between you and the original trademark holder. It doesn't mean anything otherwise. You can't "buy" trademark rights in general.
I am still not sure I get your point. I know what a license agreement is. I had licensed their registered trademarks and was allowed to use the brand name. Now we bought the registered trademarks and they are now in our name and we still sell the products.

Your original question, vague as it is, has been answered several times. There's no such thing as corporate "name" rights.
Yes. My question has been answered. Thank you and all the others who helped me.
 

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