What are Zombie Trademarks, and How Do You Deal With Them?

For centuries, October has conjured images of ghosts, goblins, and children in costumes singing, “Trick or Treat!” Lately, there’s been an onslaught of television shows and movies depicting creepy societies determined to raise the dead, and zombies seem to be everywhere. At Trademark Lawyer Law Firm, PLLC we also have extensive experience battling the strange and unusual. Whether we are dealing with a “dead trademark,” or even a “zombie trademark,” we face these challenges head-on to protect our clients from trademark thieves throughout the country.

Unlike copyrights and patents, a trademark can live forever as long as it is used and properly renewed according to the rules established by the United States Patent and Trademark Office (USPTO). In some situations, a registered trademark can die, but that is not necessarily the end of the story. Sometimes a dead trademark turns into a zombie trademark and comes back to life.

What is a Dead Trademark?

A trademark can die for various reasons throughout its lifespan. On rare occasions, a trademark holder does not properly license the mark or forgets to transfer it during a sale to a different company. That mark can be considered a dead trademark. More often, the three most common situations that lead to trademark death are:

• An applicant doesn’t respond to a USPTO Office Action during the application process and the reviewing attorney rejects the proposed trademark;
• The trademark holder fails to provide certain information requested by the USPTO to complete an initial registration or renew an established trademark; or
• After receiving the registration, the mark is not used for a certain period of time and the holder shows no intention of resuming the use of the mark in commerce.

The third scenario, known as abandonment, is the most common situation that leads to a zombie trademark and anyone seeking to re-animate the dead trademark must overcome several related challenges and complicated procedures.

If a Trademark is Dead Can I Use It?

Simply using a dead trademark is different than reviving a zombie trademark that you intend to legally register solely for your future use. If a mark is truly dead, any business may try to use it, but they risk a multitude of potential legal problems ranging from cease and desist letters to infringement lawsuits. For most companies, the danger can outweigh the potential benefits and they are better off creating a brand-new mark from scratch than risk facing the prior owner’s wrath.

However, in some cases, a business may want to revive a dead trademark and take advantage of the prior brand reputation, past nostalgia, or other business value that is now available for the taking. To obtain the legal right to use a dead trademark again in the marketplace, the mark must have been abandoned by the prior registered holder.

When is a Zombie Trademark Revivable?

It is not easy to determine exactly when an original trademark owner can revive its dead trademark or if a third party can steal the mark like a grave robber to bring it back to life. Proof of the registered owner’s intent is a key factor in these cases and can be extremely difficult to establish.

According to the Lanham Act, proof that a mark has not been used for three consecutive years is prima facie evidence of abandonment. This can lead to the USPTO listing the mark as, “trademark status: dead” but, just like a movie zombie, once a mark has died from abandonment, it can be reanimated and brought back from the dead (within a limited timeframe).

After three years of non-use, if the registered trademark holder wants to keep the mark, the burden of proof shifts to the original holder to either show:

• The mark was used during the three year period, or
• The holder intended to start using the mark again.

If a new applicant wants to steal the dead trademark, they will have the burden of persuading the USPTO that they should be allowed to revive the dead trademark and start using it because of or despite the original holder’s actions.

Can a Zombie Trademark Harm Living People?

A dead trademark that is legally abandoned may still have some life left in it if it has “residual goodwill.” When an abandoned trademark was originally used on a product or service associated with high-quality standards and an excellent reputation, the mark might be technically dead, but it’s not forgotten. One of the most important factors in these highly contentious cases can be how long the mark has been abandoned.

If a trademark is likely to cause consumer confusion in the marketplace, it will be rejected. Likewise, if the USPTO believes a zombie trademark will be used by a new owner to feed off of the prior holder’s reputation (the residual goodwill) and prey on unknowing consumers by creating confusion, the application will be denied. The real harm occurs when a consumer with fond memories of a classic brand buys a new product that resembles that brand but receives a disappointing, inferior product instead of the trusted nostalgic memory. Sadly, consumers may have no legal recourse in these cases.

You Don’t Need to Face a Dead Trademark Alone

Whether you need to revive an abandoned trademark or file an application to reanimate a zombie trademark, the process can be time-consuming, fraught with challenges, and complicated. As this area of law continues to evolve, the legal burdens and potential opposition grow. One mistake could lead to disaster.

The team at Trademark Lawyer Firm has extensive experience battling dead and zombie trademarks while protecting the business needs of our clients. After securing more than 6,000 living registered trademarks we know how to win the zombie battle. Call us at 888-504-0336 or complete our easy online form to schedule a complimentary 15-minute consultation today.