Zombie trademark

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A zombie trademark, orphan brand or zombie mark is an abandoned trademark from a brand or company which is revived by a new enterprise with no affiliation to the former brand. The purpose of reviving an abandoned trademark is to capitalize on the brand recognition and goodwill that consumers had for the older, unaffiliated brand.[1] The term "ghost brand" may sometimes be used for these,[2] but this is not to be confused with the alternate usage of "ghost mark" to refer to a kind of defensive trademark.[3]

Operating under a zombie trademark can be especially useful to newcomers in an industry who want to reduce the cost and time needed to build up brand recognition and consumer trust, which they can accomplish by linking their products to an older trademark. Consumers may assume that goods and products under the zombie trademark are of the same quality they associate with the old brand.[4] The efficacy of using a zombie trademark to co-opt consumer goodwill is unclear, as some studies have shown that consumers are wary of assuming that revived brands will be of the same quality as they remember.[5]

Only legally abandoned or expired trademarks may become zombie trademarks. Trademarks which are still in use by the original owner or for which there is no clear basis for legal abandonment can not be used as "zombie trademarks", as this would constitute trademark infringement.[6]

Legality[edit]

The legality of re-using trademarks which have been removed from registration has recently begun to be contested in countries such as Singapore and New Zealand.[7][8]

US law[edit]

Under US trademark law, trademarks are considered abandoned after three or more years of non-use by the trademark owner, and if the owner has no plans to use the trademark again in the future.[9] The use of zombie trademarks is legal in certain circumstances. Zombie trademarks do not violate section 2a of the Lanham Act, which prohibits the false suggestion of a connection with an existing trademark, because there is no existing entity who can ownership of an abandoned trademark and can claim to be harmed by association.[10]

In practice, some original trademark owners have filed suits against "zombie trademarks" that revive their abandoned trademarks. These cases are generally based on the argument that the original brand owners still have an interest in the goodwill linked to the "dead" trademark, or that consumers will be deceived by the misleading branding.[11][12] The original brand owners may also retain ownership of the trademark if it can be shown that they intended to use it again in the future.[13]

Australia[edit]

In Australian trade mark law, applicants can register an existing trademark if it can be proven that the older trademark has fallen into non-use.[14]

Examples[edit]

The American company Strategic Marks, LLC began purchasing using abandoned trademarks related to formerly popular retailers, which it planned to use in connection to online storefronts.[15] In Macy's Inc v. Strategic Marks LLC (2016) it was ruled that "Simply because a store has ceased operations does not mean that its proprietor or owner does not maintain a valid interest in the registered trademark of the business. A trademark can still exist and be owned even after a store closes."[16] A well known example of a zombie trademark is the revival of the Havana Club brand by Bacardi rum.[6][17]

See also[edit]

References[edit]

  1. ^ Gilson, Jerome; LaLonde, Anne Gilson (2008). "The Zombie Trademark: A Windfall and a Pitfall". The Trademark Reporter. 98: 1280.
  2. ^ Stim, Richard (2022-04-01). Patent, Copyright & Trademark: An Intellectual Property Desk Reference. Nolo. p. 522. ISBN 978-1-4133-2984-1.
  3. ^ Background Reading Material on Intellectual Property. World Intellectual Property Organization. 1988. p. 164. ISBN 9789280501841. Retrieved 9 April 2023.
  4. ^ Shairwal, Sakshi; Shloka, Ch (2022-02-08). "Understanding Zombie Trademarks". Lexology. Retrieved 2024-04-23.
  5. ^ Gioconda, Joseph C. (2017). "Measuring the Value of a Zombie Brand: A Survey-Based Model". IDEA: The Journal of the Franklin Pierce Center for Intellectual Property. 58: 173.
  6. ^ a b Farhadian, Sarah L. (2012). "Stealing Bacardi's Thunder: Why the Patent and Trademark Office Should Stop Registering Stolen Trademarks Now". Cardozo Arts & Entertainment Law Journal. 30: 317.
  7. ^ Handler, Michael; Burrell, Robert (2021-07-03). "Zombie marks invade New Zealand! How scared should the rest of the world be?". Oxford University Commonwealth Law Journal. 21 (2): 275–294. doi:10.1080/14729342.2021.1991147. ISSN 1472-9342.
  8. ^ Burrell, R.; Handler, M. (2022). "Zombie marks redux: is Australia safe from the New Zealand variant?". Australian Intellectual Property Journal. 33 (1). ISSN 1038-1635.
  9. ^ "abandonment (of trademark)". LII / Legal Information Institute. Retrieved 2024-04-24.
  10. ^ LaLonde, Anne Gilson (2020). "Giving the Wrong Impression: Section 2(a)'s False Suggestion of a Connection". The Trademark Reporter. 110: 877.
  11. ^ Bradley, Carrie; Dylan-Hyde, Tony (2016). "Is It Safe to Bring Abandoned Brands Back to Life". Managing Intellectual Property. 260: 45.
  12. ^ "Zombie Trademarks - When is a "Dead" Mark Really Alive, and Able to Bite?". Sterne Kessler. Retrieved 2024-04-23.
  13. ^ "Trick or Treat? "Zombie" Trademarks Can Be Frightening". JD Supra. Retrieved 2024-04-23.
  14. ^ Handler, Michael; Burrell, Robert (2013-01-19), Zombie Marks? Ceased Registrations, Failed Applications and Citation Objections Under Section 44 of the Trade Marks Act (SSRN Scholarly Paper), SSRN 2212099
  15. ^ Smith, Mike D. "Trademark settlement could signal a return of sorts for Foley's". Houston Chronicle. Retrieved 2024-04-25.
  16. ^ Friedman, Amir (2022-05-31). Trademark Dilution: The Protection of Reputed Trademarks Beyond Likelihood of Confusion. Austin Macauley Publishers. ISBN 978-1-5289-8737-0.
  17. ^ An Examination of Section 211 of The Omnibus Appropriations Act of 1998, S. Hrg. 108-919, July 13, 2004, 108-2 Hearing, *. 2008. p. 41.
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