Zombie trademarks: Legal revival or risky resurrection?

Reviving an old trademark can be a brilliant marketing move—or a costly legal misstep. Known as “zombie trademarks,” these defunct yet familiar brands occupy a grey zone between nostalgia and unfair competition. Are they fair game, or should residual goodwill shield them from third-party appropriation? Let’s examine how legal systems across jurisdictions treat these revived marks and what this means for brand owners, investors, and IP practitioners.

I – What is a zombie trademark?

A zombie trademark is a mark that has been legally abandoned—due to expiration or non-use—but still retains consumer recognition. Revived by unrelated third parties, these marks aim to capitalize on nostalgia, consumer loyalty, or the historical identity of a brand.

To qualify as a zombie trademark:

• The original registration has lapsed or been revoked;
• The mark is no longer used by the initial owner;
• The public continues to associate the sign with its former source.

Examples include legacy car brands, vintage cosmetics, or forgotten retail chains, now resurfacing in digital or retail campaigns.

II – Legal approaches to abandonment and revival

United States (Lanham Act, §45)
A trademark is considered abandoned if not used for three consecutive years—with no intent to resume. However, even minimal commercial activity (e.g., token sales or licensing) can rebut the presumption of abandonment.

European Union (EUTMR, Art. 58(1)(a) & 7(1)(g))
An European trademark is vulnerable to revocation after five years of non-use. Further, registration may be refused if it is deceptive or exploits goodwill in a way likely to mislead consumers.

France (French Intellectual Property Code, Art. L.714-5 & L.711-3(c))
A French trademark is deemed abandoned after five years without use or intent to resume. A revived mark may be refused or cancelled if it creates confusion or constitutes unfair competition (e.g., parasitism per Article 1240 of the French Civil Code).

III – Landmark cases: From Macy’s to Nehera

In the US, Macy’s Inc. v. Strategic Marks LLC, No. 3:2011cv06198 (2011 – 2016) confirmed that even limited use (T-shirts bearing legacy logos) was sufficient to maintain rights. Similarly, USFL v. Fox Sports No 2:2022cv01350 (2022) ruled in favor of trademark owners who had sporadically licensed their brand.

In Europe, the Nehera case (T-250/21) clarified that mere historical knowledge is not enough. The court required current consumer recognition to establish bad faith. Conversely, in Simca (T-327/12), Peugeot succeeded in proving bad faith due to the applicant’s intent to monetize the brand without any genuine use.

IV – Residual goodwill: A legal dilemma

Residual goodwill refers to the lingering brand recognition after a mark’s use has ceased. Courts vary in their treatment:

• In Ferrari v. Roberts, 6th Cir. 1991, continued public association justified legal protection.
• In Peter Luger v. Silver Star, Civil Action No. 97-273, 1999 WL 151873 (W.D. Pa. Jan. 21, 1999), sales impact and confusion were key evidence of ongoing goodwill.

Yet in Europe, as seen in Nehera, residual goodwill is not presumed. The claimant must show contemporary recognition, not just historic fame.

This divergence reflects broader policy tensions: should we protect consumer memory or allow market entrants to rejuvenate dormant marks?

V – Strategic takeaways for IP professionals

For original owners:

• Preserve rights through token use, licensing, or rebranding.
• Monitor applications to detect third-party revivals.
• Link historic goodwill to new IP assets.

For zombie trademark filers:

• Avoid consumer deception: use disclaimers and quality consistency.
• Rebuild goodwill transparently through legitimate use.
• Be aware of possible litigation under unfair competition or false advertising.

Conclusion

Zombie trademarks sit at the crossroads of legal ambiguity and market opportunity. Whether they represent opportunism or innovation depends on the context of revival, the presence of residual goodwill, and how consumers interpret the brand.

For businesses considering a revival strategy—or defending legacy IP—legal advice is crucial. Our firm helps navigate the risks and optimize brand strategies while ensuring compliance with national and cross-border trademark regulations.

Dreyfus Law Firm is a proud partner of a global network of Intellectual Property attorneys.

Nathalie Dreyfus with the support of the Dreyfus Law Firm

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