Retrobrands USA LLC owns registrations or has applied to register some brands you probably have heard of, like AUNT JEMIMA and LADIES’ HOME JOURNAL.
According to its website, “[o]ur mission at RetroBrands U.S.A. LLC is to revive ‘abandoned’ consumer iconic brands and to bring them back to the marketplace.” It is certainly not the only company with a business model of reviving old brands. Once well-known trademarks that are brought back to life by companies that were not the original owners – like RetroBrands – are sometimes known as “zombie” brands.
Under U.S. trademark law, a company can lose its rights to a trademark by discontinuing use without an intention to resume. This is called abandonment. If the original brand owner loses its rights, a new user might file a new trademark application. For example, in 2016, Macy’s reportedly settled a case with Strategic Marks, LLC, which had filed its own applications and sought to cancel the registrations owned by Macy’s for defunct department store brands like FOLEY’S and ABRAHAM & STRAUSS. In a more recent example, RetroBrands applied to register the mark ZIMA and petitioned to cancel a registration owned by Molson Coors for the once-popular alcoholic beverage.
Zombie brands might also come back from the dead when the original owner assigns its rights as part of the process of going out of business. This has happened with brands like TOYS R US, which was assigned to TRU Kids Inc. in 2019, and RADIO SHACK, now owned by Global Franchising Corporation.
The challenge for the owners of brands that want to move in a new direction without losing their rights is that trademark rights in the U.S. require use of a mark. U.S. trademark law does not allow a brand owner to hang on to rights indefinitely when a mark is no longer in use.
In one well-known case, Humble Oil was rebranded to Exxon, but the company made plans to retain trademark rights to HUMBLE through limited ongoing use. The court found that Exxon did not abandon the mark because it was actively working on a plan to use the mark and eventually did resume shipping barrels of oil with the HUMBLE logo from one refinery.
The world of undead trademarks is also complicated by the concept of “residual goodwill.” That is, the original brand owner may still have some rights based on continuing public recognition, even without active use of the mark.
At its most basic, trademark law is about consumer protection. In other words, consumers should be able to trust the level of quality they have come to expect from a brand. When done well, reviving a loved brand can allow consumers to relive their nostalgia. When done poorly, zombie trademarks can stagger on indefinitely in a shadowland of unmet consumer expectations. Either way, they’re on the hunt for consumer brains.