Zombie trademark

Last updated • 3 min readFrom Wikipedia, The Free Encyclopedia

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]

Contents

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

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

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

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

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

Related Research Articles

<span class="mw-page-title-main">United States trademark law</span>

A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion.

<span class="mw-page-title-main">Generic trademark</span> Common terms used to name products or services

A generic trademark, also known as a genericized trademark or proprietary eponym, is a trademark or brand name that, because of its popularity or significance, has become the generic term for, or synonymous with, a general class of products or services, usually against the intentions of the trademark's owner.

<span class="mw-page-title-main">Ghost mark</span> A trademark registered without the intention of using it

Ghost marks are trademarks which closely simulate ordinary words or phrases used in the course of trade, and which are not intended to be used as genuine trade marks. This is not to be confused with the usage of "ghost brand" to refer to the revival of an abandoned trademark by a new company.

Passing off is a common law tort which can be used to enforce unregistered trade mark rights. The tort of passing off protects the goodwill of a trader from misrepresentation.

<span class="mw-page-title-main">Trademark dilution</span> Concept of weakening a trademarks uniqueness used to grant protection for trademark rights

Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs.

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of Pub. L.Tooltip Public Law  106–113 ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart "cybersquatters" who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party. Critics of the ACPA complain about the non-global scope of the Act and its potential to restrict free speech, while others dispute these complaints. Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act (FTDA) to sue domain name registrants. The FTDA was enacted in 1995 in part with the intent to curb domain name abuses. The legislative history of the FTDA specifically mentions that trademark dilution in domain names was a matter of Congressional concern motivating the Act. Senator Leahy stated that "it is my hope that this anti-dilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others".

<span class="mw-page-title-main">Havana Club</span> Brand of rum

Havana Club is a brand of rum created in Cuba in 1934. Originally produced in Cárdenas, Cuba, by family-owned José Arechabala S.A., the brand was nationalized after the Cuban Revolution of 1959. In 1993, French-owned Pernod Ricard and the government of Cuba created a state-run 50:50 joint venture called Corporación Cuba Ron. They began exporting this version of Havana Club globally, except for the United States due to the embargo put in place by the U.S. government.

<span class="mw-page-title-main">Canadian trademark law</span>

Canadian trademark law provides protection to marks by statute under the Trademarks Act and also at common law. Trademark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors' goods or services. A mark can be protected either as a registered trademark under the Act or can alternately be protected by a common law action in passing off.

Scams in intellectual property include scams in which inventors and other rights holders are lured to pay money for an apparently official registration of their intellectual property, or for professional development and promotion of their ideas, but do not receive the expected services.

Trademark distinctiveness is an important concept in the law governing trademarks and service marks. A trademark may be eligible for registration, or registrable, if it performs the essential trademark function, and has distinctive character. Registrability can be understood as a continuum, with "inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive character at the other end, and "suggestive" and "arbitrary" marks lying between these two points. "Descriptive" marks must acquire distinctiveness through secondary meaning—consumers have come to recognize the mark as a source indicator—to be protectable. "Generic" terms are used to refer to the product or service itself and cannot be used as trademarks.

<span class="mw-page-title-main">Abandonment (legal)</span> Relinquishment under law

In law, abandonment is the relinquishment, giving up, or renunciation of an interest, claim, privilege, possession, civil proceedings, appeal, or right, especially with the intent of never again resuming or reasserting it. Such intentional action may take the form of a discontinuance or a waiver. This broad meaning has a number of applications in different branches of law. In common law jurisdictions, both common law abandonment and statutory abandonment of property may be recognized.

<span class="mw-page-title-main">Trademark</span> Trade identifier of products or services

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies a product or service from a particular source and distinguishes it from others. A trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. Trademarks used to identify services are sometimes called service marks.

<span class="mw-page-title-main">Brand protection</span> Prevent third parties from using intellectual property

Brand protection is the process and set of actions that a right holder undertakes to prevent third parties from using its intellectual property without permission, as this may cause loss of revenue and, usually more importantly, destroys brand equity, reputation and trust. Brand protection seeks primarily to ensure that trademarks, patents, and copyrights are respected, though other intellectual property rights such as industrial design rights or trade dress can be involved. Counterfeiting is the umbrella term to designate infringements to intellectual property, with the exception of the term piracy which is sometimes (colloquially) used to refer to copyright infringement.

Cybersquatting is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.

<span class="mw-page-title-main">Intellectual property in Iran</span>

Iran is a member of the WIPO since 2001 and has acceded to several WIPO intellectual property treaties. Iran joined the Convention for the Protection of Industrial Property in 1959. In December 2003 Iran became a party to the Madrid Agreement and the Madrid Protocol for the International Registration of Marks. In 2005 Iran joined the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, which ensures the protection of geographical names associated with products. As at February 2008 Iran had yet to accede to The Hague Agreement for the Protection of Industrial Designs.

A sound trademark, sound logo, or audio logo is a trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services.

Jerome Gilson was an American trademark lawyer and author of a multivolume treatise on trademark law.

<span class="mw-page-title-main">Trademark infringement</span> Violation of trademark rights

Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees. Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, especially in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.

<span class="mw-page-title-main">Unregistered trademark</span>

An unregistered trademark or common law trademark is an enforceable mark created by a business or individual to signify or distinguish a product or service. It is legally different from a registered trademark granted by statute.

References

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