From AMC's white-hot series The Walking Dead to the box office hit World War Z, the fictional zombie apocalypse is on a roll. Be forewarned, however: there may be a real undead threat lurking in your local supermarket or shopping mall, namely the zombie trademark. See, e.g., Anne Gilson Lalonde & Jerome Gilson, Gilson on Trademarks § 3.05 (2013) (discussing potential problems posed to consumers by zombie trademarks). What are these reanimated marks and does the consuming public truly need to beware of them?
How a Zombie Trademark 'Un-dies'
When used commercially in connection with goods or services, a trademark lives off of the goodwill ascribed to it in the consuming public's minds. A mark becomes abandoned when its owner stops using it with no intention of resuming use. Goodwill dwindles after abandonment, and death of the mark follows accordingly. But like the zombie virus, goodwill can defy the natural order. Some abandoned brands are so memorable that consumers continue to appreciate them, if only for the sake of nostalgia.
For example, we can no longer hop in a Gremlin and drive down to the Burger Chef for lunch, stopping off on the way back at Bonwit Teller to pick up some Underalls - all before arriving home to unwind with a nice hot cup of Brim brand decaf coffee. These trademarks are no longer in use and are dead in the legal sense. But many people remember these brands – in some cases as well as live brands we interact with today. This is known as residual goodwill.
Like Dr. Frankenstein's electricity, residual goodwill breathes apparent new life into zombie trademarks. If a new entity adopts a dead mark in order to rekindle the flames of the bygone brand, the mark is reanimated rather than revived. The new brand may look the same, but any residual goodwill that it invokes really belongs to the phantom in the consumer's memory. Even so, is this necessarily a bad thing?
In Theory: The Predatory Zombie Trademark
Commentators have speculated that zombie trademarks have the potential to harm consumers and that the law may not (but perhaps should) be equipped to address this. For example, a predatory marketer could revive a dead brand replete with residual goodwill and bring to market a product inferior to the original. Consumers might scoop up zombie Brand X Widgets, not suspecting that they are substandard and designed to part nostalgic fools from their money. The zombie owner reaps the rewards and consumers are left disappointed. Unfortunate though this scenario may seem, does it amount to actionable consumer confusion? Perhaps not.
It is important to remember that brands change hands. They may be sold and acquired with all their related consumer goodwill. Is a zombie brand significantly different from a live brand that has found its way to a new owner? Ideally, an acquiring brand owner has the best of intentions, but may fail in its mission. There is never a guarantee that brand quality will not diminish. Consumer disappointment in a zombie brand that changed hands in the afterlife may be no more poignant (or actionable) than consumer disappointment in a brand that changed hands while still alive.
Zombie Trademarks Fail to Make Real-Life Headlines
Despite the alleged theoretical harm posed by zombie trademarks, there is a paucity of evidence of actual consumer harm. There have been some skirmishes between a purported owner of a live trademark and a would be brand necromancer. Examples include Puritan brand cooking oil (The JM Smucker Company v. River West Brands LLC (N.D. Ohio – concluded)) and a number of department store trademarks purportedly owned by Macy's (Macy's Inc. v. Strategic Marks, LLC (N.D. Cal. – ongoing)). In reality, these cases do not raise an issue of zombie trademarks harming consumers, but are disputes over whether a mark was ever truly abandoned.
Thus, the question remains: Is the speculative harm caused by zombie brands more fiction than fact, or do we truly have something to fear? The answer lurks in the shadows cast by consumer nostalgia. We must wait and see if anything sinister ever emerges.
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