The Walking Dead‘s season may be over, but zombie trademarks continue to roam the earth. In this case, the undead include Bullock’s, Robinsons-May, Filene’s, and Jordan Marsh. Will Macy’s be able to prevent another company from using those legacy department store brand names? Will I be able to resist lots of corny zombie jokes? (Spoiler alert: the answers are “maybe” and “of course not.”)
Zombie trademarks are truly terrifying…to companies that used to own the rights to those brand names.
Wait, what are zombie trademarks again? From my 2012 blog post about Twinkies (my readers rely on me for only the most hard-hitting, serious legal news):
Marks that are not used in commerce for several years (three years is the generally-accepted rule of thumb) are considered abandoned. When a mark retains some level of fame, but no individual entity has rights in it due to abandonment, it can become a “Zombie Trademark” – kept alive in the public’s imagination but not in the marketplace. In theory, another party (or parties, which is where it gets confusing and potentially litigious) could come along and lay claim to it.
Over the years, Macy’s bought out many of its department store rivals, including, related to the current case, Abraham & Straus, A&S, The Broadway, Jordan March, Bullock’s, Robinsons-May, Filene’s, and The Bon Marché. Around 2007, Macy’s decided to rebrand all of its stores as simply Macy’s, doing away with the old names. They did maintain trademark registrations with the United States Patent and Trademark Office (USPTO) for “retail department store services” for three of the marks: FILENE’S, ROBINSONS-MAY, and MAY.
Are those registrations still valid? In order for a USPTO trademark registration to be maintained, the mark must be used in commerce in connection with the identified goods or services. Macy’s certainly doesn’t seem to be using those marks in connection with retail department store services. They do sell some merchandise with those brand names and the related logos on their website (e.g. this Filene’s t-shirt), but that almost certainly wouldn’t qualify as “retail department store services.”
In 2010, an Irvine, California-based company, Strategic Marks LLC, filed USPTO trademark applications for the store names listed above (see the application for FILENE’S for “Retail department store and on-line retail department store services; retail and on-line retail clothing boutiques; retail and on-line retail clothing stores; retail and on-line retail apparel stores; retail and on-line retail store services featuring clothing and fashion accessories.”)
Strategic Marks stated their intention to use those legacy – or “zombie” – trademarks for pop-up shops, and, eventually, for brick-and-mortar stores.
Macy’s filed suit against Strategic Marks for a whole list of claims, including trademark infringement and unfair competition. After the usual legal back-and-forth (Strategic Marks countersued on the grounds that Macy’s was infringing on their trademarks, and it goes on…), the case is going through the trial process.
While we await the result, there are a few lessons to remember:
1. Think very carefully before abandoning (or simply ceasing to use) one of your trademarks. You may end up having to compete against that same brand name – with all of its goodwill – in the future.
2. If you’re going to try to revive another company’s zombie trademark, make sure you’re prepared for a prolonged litigation process.
