"Night of the Living Trademark Zombie Trademarks in the United States" by Robert P Felber Jr and Julian L Bibb IV INTA Bulletin
The February 2016 resolution of the five-year-old trademark dispute between Macy’s Inc. and Strategic Marks, LLC in the United States District Court for the Northern District of California (Macy’s Inc. et al. v. Strategic Marks, LLC, Case No. 15-0612, N.D. Cal. 2016) is a reminder that zombie trademarks still walk among us.
What Is a Zombie Trademark?
Anne Gilson LaLonde describes so-called zombie brands as “previously abandoned, newly revived trademarks that still enjoy a measure, and sometimes an extraordinary measure, of consumer protection and loyalty.” Gilson on Trademarks § 3.05 [b] (Matthew Bender) (2016). These zombie brands or trademarks and the fictional zombies found in the movies and on television have one thing in common—both begin with a death. Under U.S. trademark law, a trademark “dies” after its owner ceases to use that trademark to identify the origin of products and services. At that point, the trademark owner is said to have abandoned the trademark and may no longer assert any ownership rights in the mark. Specifically, abandonment in the United States involves the trademark owner ceasing to use the mark without intent to resume use in the future. Non-use of the mark for three consecutive years creates a rebuttable presumption of abandonment.