Although perpetually renewable, in practice the vast majority of trademarks have a limited life expectancy. They are born and they die. Yet, some experience a different type of fate fate: they resuscitate.
Needless to say, the term “zombie trademark” does not refer to the recent surge in popularity of zombie culture or the slew of trademark applications it has inspired. The term refers to the rebirth of an otherwise dead trademark. These so-called zombie trademarks are connected to the past: they are in fact former trademarks, often iconic, that have an established reputation.
Unlike patents and copyright, a trademark can exist perpetually as long as it is used and renewed every 10 years. However, a company may cease to use a mark. This abandonment can occur at any time, whether it is while the application is still being examined or even when the trademark has already been in use for some time. In terms of non-use, according to Article L 714-5 of the French Intellectual Property Code, a trademark will be abandoned when an owner stops using it for five consecutive years with no intention of resuming use of the trademark. But as we can see with the zombie trademark, abandonment is not necessarily permanent. Thus, these trademarks are defined as signs which have been abandoned but that still have marketing potential, a reputation: “residual goodwill.” The zombie trademark however, requires undeniable divestiture, that is abandonment both from a practical and a legal standpoint. The trademark will then fall into the public domain.
There are many arguments in favour of reviving zombie trademarks. They spark up nostalgia and an emotional connection with the past, and their reputation reflects consumer trust and loyalty. As the brand already has an established reputation, it also saves time and money which would otherwise be invested in marketing. As a result, the adoption of such a trademark can be less of a commercial risk.
However, some legal scholars do not speak in favour of the zombie trademark. Indeed, it would supposedly lead to an unfair advantage for the company which takes over the trademark. Furthermore, the trademark is said to be fundamentally misleading.
If a company no longer uses a trademark, isn’t there a risk that protecting that trademark would result in a market freeze? Reuse of an old trademark by a new owner can well be perceived as being legitimate use. Furthermore, what is the advantage to keep protecting a trademark which, in any case, would remain dead and buried?
One should also be mindful of trademarks which have not been fully abandoned: for example, a trademark that is not effectively used by the owner but one that has still not reverted to the public domain. In that case, there is a risk of recovery while the trademark sign is still held by its owner. Here, we are no longer in the scope of common law but in that of counterfeit.
The notoriety of a trademark
A notorious trademark remains vivid in the consumer’s mind. The goal is that the consumer continues to associate the trademark to the goods or services of origin. The new trademark must however consist of entirely different products and services to avoid its new owner facing a lawsuit.
The reputation of the old trademark offers a twofold advantage for the new trademark. First of all, it can trigger instant demand for the new product, even if this interest is distorted because it is aimed at different products and services, not provided by the original owner. Finally, the reputation factor may reduce advertising costs for the new product and thus allow for increased profit.
Building a reputation is the very objective of any trademark. From a legal standpoint, this reputation is normally related to the trademark and to the company which registered and exploited it. But, in the context of the zombie trademark, the trademark does not symbolise the reputation of the present owner but that of the original owner.
Resurrecting a trademark therefore seems to pursue an essential goal: making it so that consumers link the trademark to the original product.
Protection against the rise of zombie trademarks
Normally, a company who has abandoned its trademark rights cannot prevent a newcomer from bringing the dead trademark back to life. Indeed, the disputed trademark has reverted into the public domain, theoretically allowing anyone to use it freely.
An abandoned trademark is in principle, available to anyone.
In the United States, there is legal uncertainty surrounding the issue of consumer protection against zombie trademarks. Therefore, it is appropriate to turn to the US trademark law, the “Lanham Act”, effective on July 5, 1947, and the case law interpreting the Act. Three consecutive years of non-use is prima facie evidence of trademark abandonment. US federal law states however, that this is a rebuttable presumption.
An opposition filed by General Motors Corp against Aristide & Co., Antiquaire de marques (TTAB, Opposition, 21 avril 2008, General Motors Corp. c/ Aristide & Co., Antiquaire de Marques, n°91167007) helps us better understand the notion of the zombie trademark as well as the limitations regarding the protection of well-known trademarks which have fallen into the public domain. In the early 20th century, General Motors Corp. introduced cars under the brand “La Salle.” However, the company has not used that trademark since the 1940’s. In 2004, a company called Aristide & Co applied for the registration of the expression “La Salle” as a trademark for products in Class 12. When the application was published, the famous motor vehicles company decided to oppose it, unsuccessfully. Indeed, the “Trademark Trial and Appeal Board” (TTAB) wasn’t convinced by General Motors Corp’s arguments. It was held that after 65 years of non-use, General Motors did not have any serious intent of reintroducing the trademark. The focus here is on the parties’ intentions.
Furthermore, the TTAB did not find that there was sufficient residual goodwill attributable to the “La Salle” trademark owned by General Motors. According to the Board, the mere recognition of the trademark by car collector clubs was not sufficient evidence.
In this case, the “La Salle” trademark had not been used for many years. One might ask what happens to a popular trademark that has been abandoned for a shorter period of time, say, ten years. In that case, the transformation of the trademark seems more difficult and will depend on its residual goodwill with the public. North-American courts state that successful resurrection will depend on the popularity of the original trademark but also to what extent it is recognizable by consumers as a source indicator of the original products and services. In addition, it will also depend on arguments which courts welcome favourably.
In France, legal proceedings can be initiated on the grounds of misleading trademarks. Indeed, article L. 711-3 c) of the French Intellectual Property Code states that signs “liable to mislead the public, particularly as regards to the nature, quality or geographical origin of the of the goods or services” may not be adopted as trademarks. The former owner might also sometimes act on the grounds of passing off and unfair competition.
One can try to avoid that a zombie trademark be confusing or deceiving to the public. The new owner may duplicate the goods and services linked to the original brand, while making sure the quality remains unaltered. The new owner will also have to notify the public that he is not in any case connected with the original trademark owner. However, this is possible only if the goods and services are not protected by another Intellectual Property Right like design law, patents or copyright. Ultimately, any infringement to the original trademark will depend on the sovereign power of assessment of the courts.
Resurrecting a trademark can thus be of great interest for a business wishing to take advantage of the fame of a trademark that has reverted to the public domain. However, some of these trademarks are not legally quite dead nor alive and one should be cautious as the French and North-American caselaw on this issue is still rare and uncertain.
France: in abstracto assessment of the likelihood of confusion between two trademarks is reaffirmed