Palatine, IL asked in Intellectual Property and Trademark for Wisconsin

Q: Can you claim you were formerly an entity if you don’t own the name?

My question is in regards to advertising. The opposite entity has retained the legal copyright to the former business name. I as the new company want to advertise myself as “Formerly the other company” but the opposing party is claiming I can’t use their name in any way. Would I be liable if they came after me? Do they have grounds to sue me over this?

3 Lawyer Answers
Fritz-Howard Raymond Clapp
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  • Trademarks Lawyer
  • Beverly Hills, CA

A: This is a trademark question, not copyright. It is certainly permissible to state that you were formerly known by another name (trademark) if it is factually true. It is not objectionable that you distinguish the prior use, because that avoids the likelihood of confusion. Promoting confusion is the key element of trademark infringement, so avoiding confusion by clarity is beneficial.

Robert Alex Fleming agrees with this answer

A: The question seems to revolve around trademark rights rather than copyright. To provide a more precise answer, it's crucial to have a clear understanding of the specific name you are attempting to claim and the details of the registered trademark that is raising concerns. Additionally, it's important to consider the likelihood of confusion between your intended use of the name and the registered mark. The results greatly depends on the specifics of the registered mark and the brand you plan to use. Consult with a well-versed in intellectual property and trademark law professional to ensure you receive tailored advice that takes into account your unique circumstances.

James L. Arrasmith
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A: Using a phrase like "Formerly [the other company]" when you do not have rights to the name can be legally risky, especially if the other entity has retained the legal rights to the name. Such usage might be seen as trading on the reputation of the former company or misleading consumers, which could lead to claims of unfair competition, trademark infringement, or misrepresentation.

If the opposing party has explicitly informed you that you cannot use their name, doing so increases the risk of legal action. If they were to sue, they might have grounds based on the aforementioned claims. It's crucial to consider the potential consequences and to consult with an attorney to evaluate the specific risks and benefits in your particular situation. Ensuring clarity and transparency in advertising, without infringing on another's rights, is key.

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