Forum: Author Hangout

Using name of company no longer in business?

PotomacBob 🚫

Suppose you wanted to open a restaurant and, when looking for a name, decided to use the name of a now-defunct chain of restaurants (of which there are many).
I remember Steak and Ale, Spudnuts, Burger Chef. Is it safe to use those names? Is there a waiting period?
I wish to include in a WIP what would happen to a character who wants to do just that. What obstacles would or might the character face? If it turns out to be true that you can NEVER use those names unless you find the previous owners and buy the rights to the name - is there someplace to find out WHO the previous owners are and where they are located?

Replies: Scribbler Dominions Son Michael Loucks Switch Blayde helmut_meukel Mushroom Paladin_HGWT tenyari

Scribbler 🚫

@PotomacBob

Ah... Research.

You might ask your question, at your local Bar Association. Just tell them you are researching for a fictional story, but you don't want to present mis-information in it. They'll take notice of the buzz word.

Dominions Son 🚫

@PotomacBob

What obstacles would or might the character face? If it turns out to be true that you can NEVER use those names unless you find the previous owners and buy the rights to the name - is there someplace to find out WHO the previous owners are and where they are located?

Scribbler's comment about asking the local Bar Association wouldn't hurt, but they might not have intellectual property experts, since that's exclusively federal. Law.

People like to use the IP umbrella term, but the things it covers (copyright, patents, trademarks, and trade secrets) all work very differently.

There are several important things to remember about trademarks under US law (they may work differently else where).

1. Trademarks are registered in a specific field. It is possible to register a mark for multiple fields, but this is not automatic.

So if company A has mark X registered for food service, and someone else comes along and uses the Mark for clothing, that is not necessarily a violation of the trade mark.

2. The law does not allow registering generic terms and if a registered mark becomes a generic term the trade mark can become void.

3. And this is the one important for your question. A trade mark is only valid as long as it is being actively used in the field for which it was registered. If a company that registered it's name as a trade mark goes out of business and they don't sell the name to someone else who keeps using it in the field it was registered to, then the trade mark is automatically dead.

I am not a lawyer, but as far as I know, there is no potential legal issue with someone else coming along and re-registering a dead trademark.

A good place to research this if you are looking for a US centric answer would be the US Patent and Trademark Office.
https://www.uspto.gov/

And specifically for trademarks: https://www.uspto.gov/trademarks/basics

Replies: PotomacBob

PotomacBob 🚫

@Dominions Son

The law does not allow registering generic terms

Really? I remember when I was a kid, there was a type of shirt, often worn by golfers, and the type of shirt was called a polo shirt (probably because polo players also wore them - though I never knew anybody who played polo). Then decades later, I think, somebody trademarked the name Polo shirt.

Replies: Dominions Son

Dominions Son 🚫
Updated:

@PotomacBob

Then decades later, I think, somebody trademarked the name Polo shirt.

Nope it was the other way around. The original polo shirts had a polo player on horse back embroidered on the shirt. The term "polo shirt" became generic later. And a company can lose a trade mark if that happens.

Michael Loucks 🚫

@PotomacBob

Each state maintains a registry of active corporations. You can, at least in my state, reuse a name if it isn't active for some period of time.

That said, it's complicated by Trademarks, which are federal, not by state, registrations. So even if 'Burger Chef' isn't a registered corporation in your state, Hardee's may hold some kind of mark registration on 'Burger Chef'.

I mention that specifically because In January 2007, River West Brands of Chicago, sued Hardee's claiming abandonment of the Burger Chef trademark.

River West Brands eventually dropped their petition for cancellation, and both parties agreed to pay their own costs.

Switch Blayde 🚫

@PotomacBob

is there someplace to find out WHO the previous owners are and where they are located?

If unable to use TSDR to retrieve online status information, you may telephone the Trademark Assistance Center ("TAC") at (571) 272-9250 or (800) 786-9199 and request a status check. TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Time, Monday through Friday, except on holidays.

helmut_meukel 🚫

@PotomacBob

If a company gets out of business, usually someone buys the properties (including brand names, trademarks, patents).
In case of a liquidation, to find buyers for all properties may be a lengthy process.
I doubt Dominions Son is correct with his statement:

If a company that registered it's name as a trade mark goes out of business and they don't sell the name to someone else who keeps using it in the field it was registered to, then the trade mark is automatically dead.

I don't how long, but it must be years.
There are cases where a company radically changed it's name and/or logo. No-one else can use the old name or the old logo even years after the change.

BTW, it's not quite simple to find out who is owner of a brand name or trademark.
Just look at Rolls-Royce. VW payed £430 million for the company and BMW got the Rolls-Royce name and logo for £40 million!

HM.

Replies: Dominions Son

Dominions Son 🚫
Updated:

@helmut_meukel

I doubt Dominions Son is correct with his statement:

If a company that registered it's name as a trade mark goes out of business and they don't sell the name to someone else who keeps using it in the field it was registered to, then the trade mark is automatically dead.

I don't how long, but it must be years.

The standard for abandonment of Trademark under US law is three years.

https://www.law.cornell.edu/wex/abandonment_(of_trademark)

Abandonment of a trademark occurs when the owner of the trademark deliberately ceases to use the trademark for three or more years, with no intention of using the trademark again in the future. When a trademark is abandoned, the trademark owner may no longer claim rights to the trademark. In effect, this frees the trademark so that anyone else can use it without recourse from the original trademark owner.

Replies: PotomacBob helmut_meukel

PotomacBob 🚫

@Dominions Son

Abandonment of a trademark occurs when the owner of the trademark deliberately ceases to use the trademark for three or more years, with no intention of using the trademark again in the future.

If that is really the standard, then all the previous owner might have to do to protect the unused trademark is to assert that they intend to use it again someday.

helmut_meukel 🚫

@Dominions Son

Abandonment of a trademark occurs when the owner of the trademark deliberately ceases to use the trademark for three or more years, with no intention of using the trademark again in the future.

The bold part above is why in case of a liquidation the three years don't apply when the liquidator has problems to sell the trademarks. As long as he tries to sell the trademarks, the intention is to use them in the future.

BTW, a liquidation may go for decades. IG Farben may be the longest liquidation period ever.

Founded: 2 December 1925
Defunct: 1952 (liquidation started)
31 October 2012 (liquidation accomplished)

HM.

Replies: Dinsdale Dominions Son

Dinsdale 🚫

@helmut_meukel

IG Farben: They were the company which produced the gas for the gas chambers in the 3rd Reich. They were ordered to be split into 3 main parts (Bayer, Hoechst, BASF) and two smaller ones (Agfa, Cassella) by the Allies after the war.
https://en.wikipedia.org/wiki/IG_Farben has details, although they don't mention Cassella after the breakup.

Replies: helmut_meukel

helmut_meukel 🚫

@Dinsdale

they don't mention Cassella after the breakup

There exists a Wikipedia entry Cassella.
After the breakup Cassella was owned by Bayer, BASF and Hoechst (25.1% each).

HM.

Replies: Dinsdale

Dinsdale 🚫

@helmut_meukel

3 x 25.1 = 75.3
Not as independent as Agfa, but not a wholly-owned subsidiary either (that came later).

Dominions Son 🚫

@helmut_meukel

The bold part above is why in case of a liquidation the three years don't apply when the liquidator has problems to sell the trademarks.

You'll have to pardon me for not crediting the conclusions of someone outside the US as to the interpretation of US law.

A company in liquidation by definition has no intention of using their trademarks in the future as the company will not exist at the end of the process.

Under US law if a company is being sold intact to one buyer, that isn't liquidation.

Liquidation under US law would mean that the assets of the company are being sold off piecemeal.

If the process goes past the three years, someone could challenge the trademark as abandoned before the US PTO and the company would likely have to produce evidence that there was an actual buyer for the trademark and that the buyer intended to use the trademark in the future.

And while the complete liquidation process might take a long time, the buyers of specific assets during the liquidation process don't have to wait until the entire liquidation process is complete to take possession of and begin using the assets they bought.

Replies: StarFleet Carl

StarFleet Carl 🚫

@Dominions Son

the buyers of specific assets during the liquidation process don't have to wait until the entire liquidation process is complete to take possession of and begin using the assets they bought.

I do so love a good liquidation auction, especially when it's a tool company that's going out. The wife likes the restaurant equipment auctions for baking pans.

Mushroom 🚫

@PotomacBob

Suppose you wanted to open a restaurant and, when looking for a name, decided to use the name of a now-defunct chain of restaurants

Jut because a name is no longer in use, that does not mean you can just freely use it.

That is Intellectual property, and even in the case of bankruptcy it is normally sold in court as names do have value. You have to check with the Trademark Office to see the status of the name, and if it still has a legal holder.

For example, in 2021 VitaNova Brands and all the businesses they owned (HomeTown Buffet, Furr's, Tahoe Joe's, etc) were sold at auction to Bankruptcy court. I have no idea who owns the names now, but I can guarantee that somebody does.

Replies: Paladin_HGWT

Paladin_HGWT 🚫

@Mushroom

I have no idea who owns the names now, but I can guarantee that somebody does.

Just owning the name is not enough. The owner of the name has to be using it, lest their exclusive rights lapse. Defense of their exclusivity must be enforced.

Replies: Dicrostonyx

Dicrostonyx 🚫

@Paladin_HGWT

Yes, but the use doesn't have to be particularly public.

There's a large British bookseller called WH Smith that used to have stores all over Camnada. In 1989 they sold all Canadian stores to local owners who renamed the brand Smithbooks. In 1995 Smithbooks merged with their main rival, Coles Books, to form Chapters.

These days the company has several different brand names that they use in different ways, but there's still a tiny store in one of the Ontario airports that is branded as WH Smith. By having that single store remain under that name, they hold on to the name and prevent a competitor from using it. The fact that WH Smith hasn't been associated with bookstores in Canada for 30 years is irrelevant.

Paladin_HGWT 🚫
Updated:

@PotomacBob

As to the OP, perhaps you would tell us the name of the particular chain, you want to use?

I will offer an example. A fellow author here, and I were chatting about stories we were writing at the time. He mentioned that in one of his stories a couple of characters were going out to celebrate graduation from Infantry School at Fort Benning, by being treated to a nice dinner by an elderly female family member.

I suggested the Bombay Bicycle Club...

However, a little research resulted in my discovery that it was part of a small chain, owned by a rather eccentric individual. More to the point, they have been out of business for decades.

I have thought it could be an interesting name for a restaurant, bar, etc. Since they have been out of business for decades, I would feel free to use it in a story.

Similarly, there is a dry cleaners in Seattle called the Bon Ton. It brings to mind numerous restaurants throughout the West in the 1870's into the early 20th century. Bon Ton was a famous restaurant in NYC; there is a perhaps more famous Bon Ton established in New Orleans in 1877. Although the Harvey House hotels and cafes are the first chain of establishments (that I am aware of).

Bon Ton is French for "Good Taste" but the term became popular in Great Britain for the "elites" and crossed the pond to the USA.

In both western novels, and in historical references, it was common for "frontier" establishments to use famous names to add "prestige" ironically, many were in tents, with perhaps a false front. Trademarks and such were the law, but such establishments were rarely around long enough for the Rights Holder to become aware of the "imposter"

Replies: StarFleet Carl hst666

StarFleet Carl 🚫

@Paladin_HGWT

Bon Ton

I understand the small size serving of Chinese dumpling soup is call Two ton ...

And when the British were out of crumpets, they had Tea ton ...

Of course, instead of cursing, you just say Fu ton ...

hst666 🚫

@Paladin_HGWT

To be clear, you can use trademarked names in any story you want. If there is significant trashing of it in the work that may be a different story, but it does not violate trademark law to have it inside a book. Not in the title. Not on the cover, but in the work itself is fine. Nothing that reasonably could be suggested was using the trademark in commerce. No clearance needed.

tenyari 🚫

@PotomacBob

Once a company abandons it's trademarks and other IP, they can end up being up for grabs.

The whole reason there's a never released Fantast Four movie from a few decades back was the movie studio wanted to prevent the rights from reverting back to Marvel (a moot point now as the studio and Marvel are now both under Disney).

I think in the gaming world - the company that originally published D&D went out of business some 2 decades ago, and all it's stuff was sold to the company that started the 'collectable card game' frenzy.

A pack of neo-nazis that includes the son or nephew of the author of D&D recently started publishing a White Supremacist version of a D&D like game using the brand / name of the old out of business company - which now has the company that bought D&D trying to fight this and it's not sure if they lost the right to old brand in the decades since buying them out. I believe one thing the nazi group did was put out one game that has the name of an old game - a space game where whites have subjugated every one else (so basically modern Florida as a Sci-Fi setting). And this is the trigger point as the company that bought our old publisher 'forgot' to keep any products in circulation for that space game.

That...

is why every few years Disney uses it's lobbyists to get Congress to extend how long Copyright lasts. They're worried that eventually they will lose Mickey Mouse to the same treatment.

Rights to things do not last forever.

And for things that are only trademarks, they can go away very fast.

Replies: Michael Loucks Mushroom Mushroom

Michael Loucks 🚫

@tenyari

is why every few years Disney uses it's lobbyists to get Congress to extend how long Copyright lasts. They're worried that eventually they will lose Mickey Mouse to the same treatment.

Recently, some of their earliest intellectual property (and others, such as the original Winnie the Pooh) entered the public domain.

Replies: Mushroom

Mushroom 🚫

@Michael Loucks

Recently, some of their earliest intellectual property (and others, such as the original Winnie the Pooh) entered the public domain.

And anybody is free to use the original characters.

Within limits.

They can not use the Disney images, those they do still own. One would have to create a "New Pooh", not unlike the "New Pinocchio's" that everybody uses for their versions.
And they can not use Gopher, that is a Disney created character. And Tigger was created later, he is not PD until next year.

The same with Bambi. Public Domain as of this year, but Disney created Thumper and Flower so nobody can use those characters.

Replies: akarge

akarge 🚫

@Mushroom

I wonder if "Bambi Meets Godzilla" (1969) was ever targeted for legal action.

Replies: awnlee jawking Dinsdale

awnlee jawking 🚫

@akarge

The same with Bambi. Public Domain as of this year, but Disney created Thumper

Weren't Bambi and Thumper (plus one other, whose name I've forgotten), minor characters in an early James Bond film?

AJ

Replies: Kidder74

Kidder74 🚫

@awnlee jawking

Diamonds are Forever, I think.
They were helping to hold Walter Whyte captive if I recall correctly.

Replies: awnlee jawking

awnlee jawking 🚫

@Kidder74

They were helping to hold Walter Whyte captive if I recall correctly.

That sounds about right (IMDB says Willard Whyte). Bambi and Thumper were uncredited, there doesn't seem to have been a third.

AJ

Replies: Kidder74

Kidder74 🚫

@awnlee jawking

Mixed up Breaking Bad and DaF there. Whoops.

Dinsdale 🚫

@akarge

The original "Bambi" story was written by an Austrian Jew called Felix Salten 100 years ago, he fled to Switzerland after the Nazis took over. Salten sold the film rights and they were later re-sold to Disney.
His version of Bambi was about persecution of the forest animals by hunters and was supposed to be an allegory about antisemitism, Disney's version . . .

Mushroom 🚫

@tenyari

The whole reason there's a never released Fantast Four movie from a few decades back was the movie studio wanted to prevent the rights from reverting back to Marvel (a moot point now as the studio and Marvel are now both under Disney).

Actually, that is an issue of owning film rights.

When a company buys film rights, one of the stipulations is that they actually produce a film or TV series in a set period of time, or they revert back to the owner.

In 1986, West German company Constantin Film bought the rights to make a FF movie, and they were given 6 years to do so. In 1992 the rights were about to expire, so he hired Roger Corman to film a cheap movie known as an "Ashcan Print", simply to maintain the rights.

And that is not unique. As part of the contract for "Blazing Saddles", Warner Brothers maintained the sequel rights so long as they used them. And years later when Mel Brooks announced he wanted to do one, WB informed him they still had the rights, as they had indeed made a TV series.

They filmed an entire season of "Black Bart", with Lou Gossett Jr and Steve Landesberg as the leads, but only aired the pilot a single time in late night. However, that fulfilled the requirements even if they never intended to ever air it.

Disney only reacquired the fights to FF because they bought Fox Pictures. If not for that, they would still be the rights holder. Just as Sony still holds Spider-Man.

But I would love to see an FF set in the Multiverse. Where they could have the newest Johnny Storm meet Captain America and Killmonger.

Mushroom 🚫

@tenyari

is why every few years Disney uses it's lobbyists to get Congress to extend how long Copyright lasts. They're worried that eventually they will lose Mickey Mouse to the same treatment.

Actually, they have now gone about that a very different way.

While an individual piece of media can go into Public Domain, so long as the characters are in use that is more tricky. And for over a decade now they have been carefully reusing old characters in newer projects, reaffirming their continued use.

Even making Oswald Rabbit a character in their parks now and making newer shorts of him for D+. So while the old movies may become PD, the character is still owned.

I suppose somebody can always try to make a remake of "Steamboat Willie" next year, as that is when it falls into PD. But then the problem is that Disney still markets items and movies with the historic footage and images. And being purely created that raises tricky issues.

I imagine if one did a live action they could get away with it. Not unlike other PD characters which transited from non-visual media and have been used without issue (Sherlock Holmes, and all the clones of E.R. Burroughs and H.G. Wells works) where there are no visuals to copyright and maintain use of.

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Using name of company no longer in business?

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