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Hello,
I want to start a new restaurant chain with the same name as one that
has been defunct for well over fifteen years now.
Nobody owns rights to the name and associated trademarks any more as
far as I can determine using publicly available tools), and attempts to
locate any current information on the now-defunct company return
results that are well over fifteen years old (and probably won't lead
anywhere any more).
Would I be able to reuse the name in my new restaurant chain?
- Rudy Valencia (rudyvalencia@gmail.com)
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On Wed, 29 Jun 2005 14:08:24 -0400, "Rudy Valencia" wrote:
I want to start a new restaurant chain with the same name as one that
has been defunct for well over fifteen years now....
Would I be able to reuse the name in my new restaurant chain?
The simple answer is: Maybe.
In principle, a trademark owner's rights are derived from its use of
the trademark. Once the trademark owner abandons the mark (ceases to
use it in commerce with the intention or expectation of not resuming
use), the trademark rights cease to exist. Thus, in principle, the
name of a restaurant chain that is 15 years gone is almost certainly
fair game.
If you consult an attorney, of course (and I would recommend doing so
before you start), you will get a much more complicated answer.
It will be necessary to locate the owner of whatever is left of the
original restaurant chain. No matter if it's just a manila folder in
some attorney's filing cabinet. You either need to confirm that the
name is free for your use or secure rights to it. You did not say how
thoroughly your research was conducted, but unless you are an expert
in corporate transaction law, or hired one, it probably wasn't
thorough enough. Due diligence requires measures that a layman would
not even dream of. Not necessarily very complex or expensive, but very
un-obvious.
Do you have any hopes of going international? If so, you had better
check on the name's status in other countries where you might expand.
Most nations' trademark laws are unlike those in the U.S.; the rights
to use a name are based on registration alone rather than on use. You
might be a success in the United States and be stymied everywhere else
in the world.
Last, but perhaps most important, what are your reasons for wanting to
use this name? If you want to use it _because_ it formerly belonged to
this other chain, and still is recognized and valued by the public,
you are exposing yourself to legal action for unfair competition
and/or false advertising. Even if the original owner is no longer
around to sue you, the FTC or a state consumer agency or even a member
of the public might do so. The only safe way to avoid this type of
problem is to actually buy the defunct business (e.g., that manila
folder, after you find a lawyer who has it). Then you can legitimately
claim to be restoring the business to life, rather than creating a new
business with a misleadingly similar name.
You may want to read the following article as a point of reference:
http://starklite.com/nov98pr.htm
To summarize, the original Indian Motorcycle Company ceased production
and went into receivership in 1953. When an unrelated group proposed
to resume making the Indian motorcycle in the 1990s it ended up paying
$17 million to get clear title to the trademark, even after it thought
it was good to go.
In that case the receivership apparently kept the trademark alive by
licensing it for use on unrelated products. That's an unusual
situation, but you can't tell what you will find until you look! By
getting a trademark attorney to do the necessary homework beforehand
you can avoid having to work out such issues under the eyes of the
public, the trade press, and your investors.
My email address is LLM041103 at earthlink dot net.
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Rudy Valencia wrote:
I want to start a new restaurant chain with the same name as one that
has been defunct for well over fifteen years now.
Nobody owns rights to the name and associated trademarks any more as
far as I can determine using publicly available tools), and attempts to
locate any current information on the now-defunct company return
results that are well over fifteen years old (and probably won't lead
anywhere any more).
Would I be able to reuse the name in my new restaurant chain?
You are always ABLE to, but the question is if there will be adverse
ramifications. Here, what you need to do is be duly diligent about
making sure that there aren't any rights held to trademarks, copyrights
and other intellectual properties which you hope to use.
I am skeptical that an untrained person using public tools has exercised
proper diligence. What I'd suggest is that you hire, for an agreed upon
fee, an intellectual property lawyer to do a seriously diligent search.
I doubt he'll come up with anything you haven't, but it's a good
insurance since you do know the name was once used and trademarked.
Given how much you'll put in the restaurant, and how much of a headache
it can be if someone surfaces later on with a claim against you, I think
this good insurance. OTOH, you can just go ahead. You'll probably be ok,
but I can't recommend doing that.
-paul
ianal
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