Zombie Trademarks: What to Know When Dealing with the Undead October 31, 2016

By Kristen M. Hoover

IT’S ALIIIIIIIIIIIIIIVE!!! Zombies have infiltrated our pop culture landscape with shows like AMC’s The Walking Dead, horror movie classics like Night of the Living Dead, and even zombie comedies like Shaun of the Dead. Their presence is so pervasive that we even see movies like Abraham Lincoln vs Zombies and Pride and Prejudice and Zombies pop up at the box office. However, the undead also rear their ugly heads in the business world in the form of zombie trademarks. What exactly do you need to know about these reanimated marks?

How does a trademark die?

The United States Patent and Trademark Office (USPTO) classifies trademarks as “live” or “dead”. There are a variety of reasons a mark can be classified as “dead”, but they involve legal or factual abandonment of a pending application or live registration. Trademarks get their life from use; therefore, if the owner of a mark stops using (or abandons) the mark, it will eventually die. Under the Lanham Act, after three years of nonuse there is a presumption of abandonment, barring excusable nonuse for special circumstances. 15 U.S.C. §1127. Special circumstances may include things like sale of the business, trade embargo or catastrophe such as fire or zombie apocalypse, since there’s not much most of us can do to stop those monkey blood viruses that always seem to start these things.

How do you resurrect a trademark?

In order to bring a dead mark back to life, the rules depend on whether the original owner is resurrecting the mark or a new owner wants to play Dr. Frankenstein. After the three years of nonuse, an original owner must have more than token use or prove intent to resume use. Crash Dummy Movie, LLC v. Mattel, Inc., 601 F. 3d 1387, 1391 (Fed. Cir. 2010). Proving these is heavily fact-driven, but usually involves providing documents showing sales made in a good faith effort to do business.

For a new owner to resurrect a mark, proving a mark was abandoned and the original owner had no intent to resume use is not the end of the story. The final piece is “residual goodwill”. Residual goodwill is what allows a trademark to identify the source of a product after it is no longer produced. Children of the 90’s may recall the drink Clearly Canadian. There’s enough residual goodwill still associated with this mark that a crowd-funding campaign on Indiegogo raised more than $153,000 to bring back the product, far surpassing their goal of $50,000. However, this is a tricky topic because on one hand residual goodwill may be the reason a new owner wants to resurrect the mark, but it simultaneously serves as the basis of confusion for consumers and, after all, trademark law is all about avoiding consumer confusion.

How do I avoid getting bit by a zombie trademark?

Generally speaking, the longer a mark has been dead, the more likely the residual goodwill will not be an issue. For example, in 2008 GM opposed a trademark application filed by Aristide & Co. for the mark LA SALLE. Some may remember GM’s Cadillac La Salle which was originally sold in 1927. GM stopped making and selling La Salles around 1940. Aristide filed their new application in 2004. The Trademark Trial and Appeal Board (TTAB) decided that after 60 plus years of nonuse, GM did not have “any serious intent to reintroduce a La Salle vehicle”. General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179. Problems arise when the period of nonuse is less and the popularity of the original mark is high.

Original owners of strong, well-known marks should seriously consider the effects that abandonment of that mark will have and possible repercussions. Those considering playing Dr. Frankenstein on a mark have a difficult path to navigate as well. Just like The Walking Dead’s Negan is armed with Lucille, you should speak with an intellectual property attorney to arm yourself for the zombie trademark fight ahead!

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