Regular readers of my rants have figured out by now that I am a scotch drinker, a bit of a nerd, and have a penchant for the quirky (and good Scrabble® words). Now comes another confession- I’m a horror film aficionado. My favorite movie of all time is George Romero’s 1968 Night of the Living Dead, so when I came across the concept of a “zombie” trademark, I found myself once again squealing with glee and clapping my hands like a schoolgirl.
The Trademark Office classifies marks as live or dead, which dovetails nicely into the zombie concept. But a zombie trademark does not refer to the recent increase in popularity of zombie culture or the slew of trademark applications it has inspired. It actually refers to the revival of an otherwise “dead” mark. This does not involve patching together pieces of dead trademarks to create a new living one, as Dr. Frankenstein would presume, but it does require resurrecting a mark from the trademark graveyard.
Unlike patents and copyrights, a trademark can exist in perpetuity so long as it is being used. And a mark has to be used to stay alive. But sometimes, and for a variety of reasons, a company will stop using a mark. This is known as “abandoning” it. A trademark can be abandoned while the application is still pending or it can be abandoned later after it has been in use for some time. Abandonment can happen for a few reasons, for example, failure to respond to an Office action or for failure file a required affidavit. But today, we’re talking about abandonment for non-use. Abandonment can be a tricky concept, but in terms of non-use, a trademark will be abandoned when an owner stops using it with no intention of resuming use of the mark. But abandonment is not necessarily permanent, hence the zombie nickname. A once dead trademark can spring back to life if a few conditions are met. This is not unheard of, but this time our guidance is found in the Lanham Act and cases interpreting it, not the TMEP. The feasibility of making a zombie trademark will depend greatly on whether it is the original owner playing Re-animator or a grave robber playing Dr. Frankenstein.
Theoretically, someone else can snatch up the rights to a trademark when the mark has been abandoned. But when it comes to non-use, this is not as easy as it sounds. The Lanham Act tells us that three consecutive years of non-use is prima facie evidence of abandonment. But the Federal Circuit in Crash Dummy Movie, LLC v. Mattel, Inc., 601 F. 3d 1387, 1391 (Fed. Cir. 2010), provides that it this a rebuttable presumption and even though the burden shifts to the owner to produce evidence that she either used the mark or intended to resume its use during that time, the burden of persuasion remains on the applicant. Intent is the kicker here, which can be a monster to prove in court (see what I did there?) Even though the standard requires more than a token use, the analysis is heavily fact driven and evidence dependent but it can be met easily with documents showing intent to use or reasonable grounds for non-use.
Still, one person’s trash is another’s treasure, and resurrecting a mark from the dead is not impossible. General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) helps us illustrate this concept. Some reading this will no doubt recall the Cadillac La Salle (Gee, our old La Salle ran great!) General Motors hadn’t used the mark since 1940, so in 2004, a company called Aristide applied to register it. When the application was published for opposition, GM did oppose it but unsuccessfully. The TTAB remained unconvinced by GM’s argument that the new application should not be permitted to register. It turns out that after 65 years of non-use, GM did not have “any serious intent to reintroduce a La Salle vehicle”. But the inquiry didn’t stop there.
Just as non-use does not equal abandonment, abandonment does not mean Thundercats are go. Trademark law contemplates common law rights, so even though a mark hasn’t been used, and even if one can sufficiently prove “intent not to resume”, that dead mark could still have source-identifying power left in it-the “dead but not forgotten” concept. Also known as “residual goodwill”, this is a highly contentious topic that courts still struggle with. One the one hand, permitting a new company to use a dead mark can result in consumer confusion that allows the new owner to exploit that brand’s built-in popularity. On the other hand, if a company isn’t using a mark anymore, protecting that dead mark could result in chilling of the marketplace for legitimate uses of marks that would otherwise remain dead and buried.
Remember that the crux of any trademark matter is confusion in the marketplace. The Lanham Act doesn’t talk about residual goodwill, but it is occasionally contemplated in the confusion context. The concept is not universal; some courts won’t even consider it as a viable idea while others will consider it in conjunction with evidence of intent to resume to avoid a finding of abandonment. In the La Salle case, the court did not find that there was any residual goodwill attributable to GM with the La Salle mark even if there was some remaining recognition of the mark from car collectors. But the La Salle case was kind of easy- the mark had been dead for 60 years. What if a mark was really popular, say in the 1980s, but hasn’t been used since the 1990s? A trademark that is mostly dead, but slightly alive, if you will. Zombification is much harder to do in that case and can depend on the amount of residual good will the mostly dead but slightly alive mark had. Generally speaking, successful resurrection will depend on how popular the mark was to begin with, and to what extent it is still recognizable as a source indicator, even if that source no longer exists. And it will also depend on to what extent, if any, the court will entertain arguments about residual goodwill. But, theoretically, if a person wanted to use a zombie trademark, it’s not totally outside the realm of possibility.
For a new applicant, creating a viable zombie trademark can be problematic from start to finish. It’s work intensive, the law all over the place, the burden of proof is high, and the chance for opposition and even infringement litigation from the original owner remain a real concern. So even though a zombie trademark is not as terrifying as a shambling horde of the walking dead, creating one requires just as much careful consideration of all the possible outcomes as breaking into a viral testing lab and releasing Rage infected monkeys. OK maybe not that much, but still, a lot. And kudos to anyone who can pull it off. I just hope that person raises her fists in the air and yells, “It’s alllliiiiive, ha ha ha ha haaaa!” if she’s successful, otherwise, what’s the point?