Dialing in on Trademark Abandonment?

By Steve Baird on October 26, 2009

Posted in Advertising, Branding, Genericide, Loss of Rights, Marketing, Sight, SoapBox, Trademarks

What do these photos have in common, besides the fact that they are both from Roadsidepictures‘ beautiful photostream collection posted on Flickr?

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:

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:

Tesco Stores Colgate-Palmolive Colgate-Palmolive

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?