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Zombie Trademarks

November 13, 2013

Two stories of zombie trademarks.

First in Mondaq: “Zombie Trademarks: Are They Really An Undead Threat To Consumers?” by Anthony Rufo, Foley Hoag LLP:

zombie anthony rufo foley hoag

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.

Note the connection of electricity to Benjamin Franklin and consider Mary Shelley’s Frankenstein as commentary on the American revolution, the monster as the patchwork U.S. Constitution, and as response to the Frankish Kings. Is America, maybe, a zombie brand?

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.

Second in Alligator: “UF grad’s Chicken Soup zombie book pulled from Amazon” by Michaela Bisienere:

A zombie-themed spoof on the “Chicken Soup for the Soul” books created by a UF alumnus has been pulled from Amazon.com due to trademark concerns. “Chicken Soup for the Undead Soul” was published on the site Oct. 12 and removed Nov. 1.

The “Chicken Soup for the Soul” brand is well-established but this was a parody. Apparently, the author did not do enough to distinguish the new e-book as a parody. Parody should be protected speech and is often a defense to copyright infringement as fair use. But for trademark litigation the issue is consumer confusion. Recall the case of “Elf on the Shelf” and “Elf off the Shelf”. Maybe Jordan Alva could put a “Zombie Slayer” on the cover or otherwise make the “parody” clearer and then republish…?

Maybe Mr. Alva should call Mr. Rufo and see if he can help…

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