The shopping dead (Best of 2016)
Says Pamela Chestek, of the Property, intangible® blog:
I haven’t written about “zombie” or “heritage” marks in a long time.
So when she does, we don’t want to miss it! Here’s the story. As usual, I copy copiously from Pamela, who doesn’t waste a word in this post:
I last wrote in 2011, about a suit involving department store brands that Macy’s acquired and rebranded, abandoning the original names of Marshall Field’s, I. Magnin, Burdine’s, Kaufmann’s, Lazarus, Meir & Frank, Rich’s and Strawbridge’s. Macy’s created a “Macy’s Heritage Shop” where it sold T-shirts and tote bags sporting the store names. Macy’s also filed trademark applications for T-shirts and tote bags.
Defendant Strategic Marks is in the business of trying to revive “zombie” brands, or brands that have been abandoned but still have name recognition with consumers. It filed trademark applications for the department store names and started a “Retro Department Stores” website, selling T-shirts with the retro branding on them. Macy’s sued in two different lawsuits.
The opinion is on a motion for partial summary judgment, with Strategic Marks arguing that the use of the department store brands on T-shirts and tote bags is ornamental, not use as a mark.
Macy’s successfully defended the validity of the marks on a theory of “secondary source,”explained this way:
It is a matter of common knowledge that T-shirts are “ornamented” with various insignia, including college insignias, or “ornamented” with various sayings such as “Swallow Your Leader”. In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, “Swallow Your Leader” probably would not be considered as an indication of source.
The “ornamentation” of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source. Thus, the name “New York University” and an illustration of the Hall of Fame, albeit it will serve as ornamentation on a T-shirt will also advise the purchaser that the university is the secondary source of that shirt. (* The Patent and Trademark Office will register a mark on this theory too. TMEP § 1202.03(c).)
The court concludes that Macy’s trademarks use on T-shirts and tote bags is not ornamental because the marks are associated with the department stores:Simply because a store has ceased operations does not mean that its proprietor or owner does not maintain a valid interest in the registered trademark of the business. A trademark can still exist and be owned even after a store closes.[fn2] If an accused infringer uses the mark, a consumer may still be confused as to whether the owner of the trademark authorized or licensed the infringer…. Where as here the mark is arbitrary and has a well-known association with a source (as here) rather than constituting some generic term without any such association, and particularly where “TM” appears next to the mark or the accused products, the marks are not ornamental.
If the department store doesn’t exist anymore (putting aside for the moment that there wasn’t an abandonment theory before the court), meaning there is no primary use of the mark, how can the secondary source justification for the validity of the mark on promotional goods still apply?
Pamela then explains how “secondary source” protection works. Registrations for the marks were granted when the respective department stores were still in business, then renewed for additional “secondary” uses with the examining attorney “expressly relying” on the mark already having achieved distinction “for the same or related services.”
And what are these related services? They are, in fact, a species of what we here at LIKELIHOOD OF CONFUSION® will henceforth refer to a “garbagio” goods, such as hats and tote bags, i.e., those generic, no-account, garbage goods that are meant as placeholders in the “goods and services” department of your local trademark application for what is really a free-floating trademark of kind of nothing at all (i.e., a right in gross, which under the law cannot be protected). They’re great for registering things like slogans and “tropes.”
In a case such as this, there were once real bricks and mortar, and while the store is gone, the garbagio zombies live on, as Pamela explains:
So we have a successful strategy for indefinitely extending the lifespan of a zombie brand—put the logo on a few cheap T-shirts before the facially valid registration expires and claim it is a secondary source mark when there is no use of the mark for its primary goods or services.
Brilliant! So what does this mean, then? Does this give every trademark the ability to live on in every class, forever?
Not quite. Garbagio goods have their charms, but they are of a distinctly retail nature. It is not unreasonable to extend tote bags, at least, to retail services such as are provided by department stores. But this strategy probably would not work for all trademarks in all classes.
Or would it? As Pamela points out, after all, t-shirts pretty much one-size-fits-all. If so, why ever worry about dilution again — or about proving the fame a trademark needs to qualify for dilution under the federal dilution statute? Once your mark has acquired distinctiveness, it would appear that standard diligence for any valuable registration would be to register something — something t-shirt-like — in just about every damned class, expect the PTO to deferentially “refer” to the Big Daddy mark in granting the registration, and just let it roll.
It seems, more than ever, that we all have something to learn from zombies!