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Name rights of a company that merged

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quincy

Senior Member
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.

Yes. My question has been answered. Thank you and all the others who helped me.
Were you a franchise? A franchise agreement allows you to operate your business using the name/identity of the original trademark holder.
 


quincy

Senior Member
No franchise. We had an exclusive trademark license agreement for all their trademarks in EMEA.
You might want to have a trademark attorney in your area look over the exclusive trademark license agreement, and the subsequent “sale” of the trademarks to you.

I know trademark holders can (and do) grant others limited exclusive rights to carry out for the trademark holder something that benefits them both financially (e.g., creating tee shirts with the trademark; creating toys with the trademark).

But the trademark needs to find its place on a product/service for it to have much value.
 

FlyingRon

Senior Member
The registration can be assigned, but yes, without some compatible use in commerce, it will be hard to defend.
 

quincy

Senior Member
Agreed.

If the trademark is inactive and presumed abandoned, anyone at this point can try to register the trademark as their own. If STEPHAN wants to keep the original trademark for himself, he needs to start using the mark on whatever it is he is marketing, and then he should apply for federal registration.
 

STEPHAN

Senior Member
Outside the US we are actively selling the products. The transfer from a license agreement to owning the trademarks was handled by a trademark attorney.

In the US we have never been selling. There were no sales in the last five years and the trademarks are canceled. So I am gambling ...
 

quincy

Senior Member
Outside the US we are actively selling the products. The transfer from a license agreement to owning the trademarks was handled by a trademark attorney.

In the US we have never been selling. There were no sales in the last five years and the trademarks are canceled. So I am gambling ...
Yes, it is a gamble. If the trademark is used by you exclusively outside the US, someone in the US could register the name here in the US as an identifier for their US goods/services.

I don’t know how likely that is to happen. The “abandoned” names can be abandoned for a variety of reasons and some of these reasons do not make the marks a very good choice as the trademark for a new company.

Good luck.
 

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