Revival of Abandoned Brands – Like a Phoenix, but with Trademarks!

As discussed in a previous blog post, in the United States use of a trademark is generally required in order to obtain and maintain trademark rights (whether “common law” or a federally-registered).  Like all good things, however, use of many trademarks eventually comes to an end.  Once-popular brand names go out of fashion, companies are acquired and absorbed/re-branded, or use of a brand simply stops.  Are such trademarks lost to the sands of time?  What about nostalgia’s continual reinforcement of the cliché “What’s old is new?”  Can old brands be revived and, if they can, who can do so?  We’ll get to that in a minute, but first…

A word on abandonment

In order to remain in force, federally-registered trademarks must have proof of current use filed between the fifth and sixth years after registration, between the ninth and ten years, and then before the end of every ten-year period thereafter.  Failure to submit acceptable proof of use results in automatic cancellation of the registration.

In addition to the foregoing, in the U.S. a trademark is considered “abandoned” when use of the mark stops, coupled with the intent not to resume use.  Non-use of a mark for 3 consecutive years is considered prima facie (i.e., presumed) evidence of abandonment, though such a presumption may be rebutted.  A mark is also “abandoned” when, through a course of conduct by the owner, a mark becomes the generic name for the associated goods/services, or otherwise loses its source-identifying significance. Now…

Back to the matter at hand

So, you can accrue trademark rights through using a mark in a source-identifying manner, then can lose those rights; can you (or someone else) later “revive” those rights, in connection with the same goods/services? Maybe (BTW, clients love getting that response).  If a mark has become the generic term for a good or service, it can be next-to-impossible to re-associate that mark with a single source of those goods/services (think “escalator,” which was once a trademark).

If a mark was abandoned for some other reason, however, the original owner or a third party may be able to resume use of the mark with the original goods/services, and accrue trademark rights once again.  One example of such a mark is HYDROX™ chocolate sandwich cookies, the manufacture of which was discontinued in the early 2000s, only to have a third party research the recipe and re-launch the brand around 2015.  The new provider also cancelled an existing federal registration for the HYDROX mark, based on abandonment, and re-registered it in its own name.  Indeed, there are businesses that have the business model of reviving abandoned brands.  Thus, there may be opportunities for reviving your long-lost childhood brands, but…

Reviver beware

Just because you think a trademark has been abandoned doesn’t mean that the prior owner agrees with you.  Should it have the will and the budget to do so the prior owner can, at a minimum, lead you to spend large sums money in furtherance of your efforts (whether or not you are eventually successful in proving abandonment).  At its worst, you may be liable to the prior owner for infringement.

When a business related to what we’re calling the “HYDROX reviver” attempted to do the same with multiple department store chains that Macys had acquired and re-branded, Macys objected.  Although the dispute ultimately settled it serves as a reminder that using the trademark of another (even a mark that you believe has long-since been abandoned) should not be undertaken without significant investigation, appreciation of the risks, and consultation with an experienced trademark attorney.