If you don’t use your trademark, it could become a zombie.  Macy’s Department Stores has been absorbing local department stores and their trademarks for decades. Once Macy’s takes over, it rebrands the store. But, those old department store trademarks still exist in the minds of the consuming public. In other words, the dead trademarks became zombies. Seeing the marketing potential of zombie trademarks, Strategic Marks started selling T-shirts using them. Macy’s filed a trademark infringement suit against Strategic Marks and won. It helped that Macy’s hadn’t really abandoned most of the trademarks. It was using them in its “Heritage Collection”. In the end, the parties settled and Macy’s transferred some trademarks to Strategic Marks.

WHY YOU SHOULD KNOW THIS. If you stop using a trademark for more than 3 years, the law presumes that you abandoned it. Then someone can start using your trademark and get a free ride on the goodwill you established. If you stop using a trademark but intend to revive it in the future, there are steps you can take to escape the 3 year presumption. Of course, this isn’t a problem if the original owner is out of business or has no intention to revive the trademark. For instance, Leaf Brands revived “Hydrox” for cookies after it confirmed that the owner of the trademark had no interest in resurrecting the brand.

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