Dialing in on Trademark Abandonment?

Posted on October 26, 2009 by Steve Baird
What do these photos have in common, besides the fact that they are both from Roadsidepictures' beautiful photostream collection posted on Flickr?
 
Abandoned by Roadsidepictures  Dial Soap, 1960's by Roadsidepictures.
 
Well, one might say, they both illustrate a form of abandonment, an abandoned building on the left, and apparently some abandoned intellectual property in the form of a clock logo and 'round the clock protection tagline on the right (the package of vintage Dial soap apparently was purchased in Sandy, Utah, as late as 2003).
 
With respect to trademark abandonment, at least under U.S. Trademark Law, it is often said, a trademark owner must "use it or lose it." Apparently in that spirit, over the last couple of decades or so, Dial has permitted its various U.S. Trademark Registrations containing the clock logo and 'round the clock protection tagline to become cancelled or to expire, here, here, here, here, here, here, and here.
 
If a trademark owner discontinues use of a trademark with an intent not to resume use of the mark, at that very moment, the trademark is immediately abandoned (putting aside the potential issue of "lingering goodwill"). Since U.S. Trademark Law appreciates (or at least anticipates) that there is likely to be debate over the "intent not to resume use" element, legal abandonment is presumed after three consecutive years of non use.
 
A couple of other important points about trademark abandonment are worth noting.
 
Under U.S. Trademark Law, if a trademark registration has been abandoned or permitted to lapse or expire, it doesn't necessarily mean that the underlying common law or unregistered trademark rights have been abandoned -- if the mark remains in "use" there is no trademark abandonment, only relinquishment of the registration. Keep in mind that "use" means "bona fide use" of a trademark "made in the ordinary course of trade, and not made merely to reserve a right in a mark."
 
In addition, trademark abandonment occurs "[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." So, if the trademark owner does something (like misuses its mark) or fails to do something (like enforce its rights against infringers) that causes the mark to become generic or otherwise lose its significance as a trademark, there is legal abandonment of trademark rights. 
 
So, what often happens in the marketplace after a trademark is abandoned?
 
Others tend to view this as an open door to adopt the same or similar marks: 
Zest Ocean Energy Body Wash

Do you suppose Dial has any regrets in letting the clock logo go?

Apparently the lapsing of the Dial clock logo registrations was noticed by others too:

Mark Image        

          Tesco Stores                            Colgate-Palmolive                      Colgate-Palmolive

  Mark Image Mark Image

                          St. Ives                                              Tesco Stores                  Universal Beauty                     

Honestly, and to my point about the potential for "lingering goodwill," the Zest Ocean Energy body wash container actually was the inspiration for my post today. I recently noticed the clock design on the Zest container and it struck me as odd because I knew Zest to be a Procter & Gamble brand, yet I associated the clock design with Dial, a company I didn't think had been acquired by P&G. As it turns out, Dial is now owned by Henkel, not P&G.

Finally, you may have noticed my careful use of the word "clock" to characterize the various logos above. Would it be just as fair to refer to them as "dial" logos? After all, the first listed dictionary definition for "dial" is "a plate, disk, face, or other surface containing markings or figures upon which the time of day is indicated by hands, pointers, or shadows, as of a clock or sundial." If so, that brings to mind the doctrine of picture-word equivalency in determining likelihood of confusion. What might that say about Henkel's chances of establishing likelihood of confusion based on its retained rights in the DIAL word mark as compared to the various "dial" logos used by others on similar or competitive products?
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How Hot Will This Saucy Trademark Chip Fight Be? Blazin' Hot? Now, That's Hot!

Posted on May 7, 2009 by Steve Baird

There is no question that attempting to own "hot" or versions of "hot" appears to have great value and importance in the marketing world. So, how many original, unique, and memorable ways are there to communicate spicy "hot" anyway?

As to memorable, perhaps painfully memorable, Paris Hilton apparently sells designer clothes under her "That's Hot" brand, and judging from her pending federal trademark filings, she still has an intention of expanding her "That's Hot" brand to cell phones and alcoholic beverages, among other items, but apparently not buffalo chicken wing sauce or potato chips, thankfully.

Otherwise, it really might distract from a recent pair of trademark food fights in Minneapolis, both involving chips claiming to be "hot" too. You may recall the "Red Hot" Chip Fight between Barrel O'Fun and Old Vienna discussed here, that was quickly bagged here.

So, here are the current contenders in the most recent "Blazin' Hot" trademark food fight:

   Vs.   buffalowings

A copy of the Buffalo Wild Wings trademark infringement complaint against P&G and Pringles is here.

The most interesting aspect of the complaint, from a trademark strategy perspective, is the fact that Buffalo Wild Wings did not bring a claim for infringement of a federally-registered trademark (Section 32 of the Lanham Act). Instead, it only relies on Section 43 of the Lanham Act (designed to protect unregistered trademarks) and a pair of Minnesota state law causes of action, even though it refers to owning some federal trademark and service mark registrations for and containing the term BLAZIN'. Perhaps Buffalo Wild Wings is attempting to insulate them from attack or challenge by P&G, since none is five years old yet or incontestable. Stay tuned to learn whether P&G turns up the heat on this dispute and counterclaims for cancellation anyway.

Now, as to the "original and unique" point raised above, it is worth asking, who else appears to have a stake in "Blazin" hot trademarks for food products? Uh, let's just say, more than a few . . . .

Sara Lee owns a federal registration for BLAZIN' HOT covering processed meats and meat snacks, and sandwiches, namely sausage biscuits;

Frito-Lay owns a federal registration for BLAZIN' BUFFALO & RANCH covering tortilla chips;

Pilgrim's Pride owns a federal registration for BLAZIN' WINGS covering chicken wings;

Jardine's owns a federal registration for BLAZIN' SADDLE covering hot (spicy) salsa;

International Market Brands owns a federal registration for BLAZIN RED covering red hot sauces;

Meijer owns a federal registration for MEIJER BLAZIN' BBQ SAUCE covering barbecue sauce;

Hot Stuff Foods owns a federal registration for BLAZIN' covering dry spice mix;

Jarden owns a federal registration for BLAZIN' ONION covering a seasoning kit;

Oasis Foods owns a federal registration for GRILL BLAZIN' covering barbecue sauce; and

Branding Iron Foods owns a federal registration for E.Z. EARL'S BLAZIN-HOT covering hot sauce.

So, how is it that in the prayer for relief in the complaint, Buffalo Wild Wings asks the court to enjoin P&G "from using the term BLAZIN' with the words 'buffalo,' 'wing,' or 'sauce'?

OK, I'm not THINKIN' ARBY'S, but I AM THINKIN' the scope of claimed rights in BLAZIN' is going to be an issue in this case.
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