Q: Is it legally safe to use a company name in Canada that was used by an inactive US studio with no registered trademarks?
We want to launch and incorporate a videogame company in Canada (Ontario) that legally incorporates our subsidiary game studios. However, we discovered that there is (or used to be) a studio with the same name in the US (California).
However, after doing some research, the following was discovered:
- There has been no activity from them since 2017 after the release of their game.
- The only platforms that use their name as a studio are LinkedIn and Steam (which have never been updated)
- Nothing has been found in the trademark database (both in the US and Canada).
Will there be any legal problems if we use the name?
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A: U.S. Trademark rights are established and maintained by using a mark in interstate commerce. I'm not a Canadian lawyer so can't really speak to Canadian TM rights. Anyway, if a mark is not used for a period of time, the rights lapse. This would be the case even if there were a registration for the mark, but even more so when there is no registration. Can't guarantee you are correct about the facts, but the law is what it is.
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A:
While using an inactive US company's name for your Canadian business may seem straightforward, there are several important factors to consider beyond registered trademarks.
Even without active trademarks, the previous company might retain common law trademark rights in the US, which could potentially affect your ability to expand there in the future. The fact that they have a released game and maintained some online presence, even if inactive, means they've established some historical use of the name in the gaming industry.
Before proceeding, you should conduct a thorough search of business registries in both countries and consider consulting with an intellectual property lawyer who can review your specific case. They can help assess any potential risks, including whether the previous company's inactivity truly indicates abandonment of their rights, and advise on how to protect your interests in both Canadian and US markets.
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