Loyal readers know that trademark rights are dynamic, use-it-or-lose-it intellectual property rights.

So, when signage announces a name change, it jumpstarts the question of trademark abdonment:

The above signage and reporting around the sale and rebrand of SuperAmerica convenience stores seem to suggest the SuperAmerica name will cease to be used, bringing Speedway coast-to-coast.

Time will tell though if there is a plan in place to avoid legal abandonment of the SuperAmerica trademark, so that it does not become part of the public domain, available for others to adopt.

We explored this important question a few years ago, when we discovered Chevron’s efforts to maintain exclusive rights in the Standard trademark:

“Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because ‘token use’ of a trademark was rejected as a ‘use in commerce’ in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing ‘token use’ as a now failed way of developing trademark rights, the definition of ‘use in commerce’ was amended to add this critical language, requiring the use to be: ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.’

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made ‘merely to reserve a right in a mark.’ Congress did indicate that what constitutes use ‘in the ordinary course of trade’ will vary from one industry to another. It also noted that ‘use in commerce’ should be ‘interpreted flexibly’ so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.”

It appears most of the SuperAmerica trademark registrations recently have been renewed, so with ten year terms, it likely will be several more years before we begin to see what, if any, use is relied upon at the Trademark Office to maintain registered rights in the SuperAmerica mark.

In the meantime, what do you think, is there a plan in place to maintain rights in SuperAmerica?

We’ve been stalking Kevin O’Leary’s nutty Mr. Wonderful trademark application, for a while now.

In April, we thought the USPTO would refuse registration of Mr. Wonderful for nuts, based on this:

In June, we were shocked to see the USPTO missed issuing the obvious refusal, and in August, we noted and reported that The Wonderful Company LLC had filed an Extension of Time to Oppose.

Just last month, O’Leary’s trademark counsel filed a Request for Express Abandonment of the Mr. Wonderful trademark application, and the USPTO promptly issued a Notice of Abandonment.

One of O’Leary’s most famous lines from Shark Tank seems to fit this very moment, as we mourn the loss of O’Leary’s Mr. Wonderful trademark application for roasted nuts, with a popular meme:

Last week, I enjoyed the privilege of returning to Iowa City (where it all began) for Executive Leadership Board Meetings at the University of Iowa College of Pharmacy. Great meetings there!

During a stroll through downtown, I was reminded of Deadwood, a legendary Iowa City tavern, so I snapped a few photos, having long forgotten the creative tagline — Institute of Higher Learning:

Deadwood has special meaning in the trademark world. A federally-registered mark no longer in use and legally abandoned, is considered deadwood, making it ripe for and subject to cancellation.

We’ve written before — here and here — about the challenges of trademark deadwood that face brand owners, and we’ve also highlighted the USPTO’s proposed help on the way, here and here.

Yet, until there is perfect alignment between every federal registration and corresponding actual use, the problem of deadwood will remain, even if it is less frequently seen by brand owners.

What we haven’t discussed much before is how to guage whether a registration is deadwood. The most common approach is to have a routine, professional, factual investigation conducted.

Turns out though, even reputable, professional investigations that reasonably seem to point to non-use and abandonment are not perfect, nor are they a guarantee of all the relevant facts.

For example, years ago, we received a petition to cancel our client’s federal trademark registration on abandonment grounds. Petitioner’s counsel was overly-confident in the assertion of non-use.

The investigation even noted that the mark no longer appeared on our client’s product packaging and labeling. Sadly for the Petitioner though, the mark was still in use on point of sale materials.

As a result, the matter resolved very differently than expected for Petitioner. Our client ended up selling the registered mark and receiving a royalty free license back to continue using the mark.

Back to the Deadwood mark shown above, technically it is not deadwood at all, first, because it is not federally-registered, and second, it is very much in use, posing a very different kind of issue.

Undoubtedly there are unregistered rights in the Deadwood mark, and the owner could come out of the woodwork to oppose or cancel another’s registration even up to five years after issuance.

Given the uncertainty of when and if the owner of an earlier unregistered mark wakes up to the importance of federal registration, it is pretty risky to ignore these kinds of uses during clearance.

Finally, given the uncertain and imperfect nature of trademark investigations, it’s best to think ahead and have some alternative leverage in mind before chopping at wood assuming its dead.

A recent advertisement caught my ear because it involved financial services offered by a guy named Charles Hughes a/k/a Chuck Hughes and the catchy marketing phrase Trade Like Chuck:

It instantly reminded me of a piece I wrote in 2010 called: Exposing Two-Face Brands. One of the branding truncation examples I wrote about there noted how Charles Schwab exposed a much less formal and more personal and engaging face with the popular Talk to Chuck advertising campaign.

The folks liked it, so Susan Perera and I responded by writing a more in-depth version for Minnesota Business, providing other examples of the trend toward truncation and informality in branding — then, I wrote about Talk to Chuck in yet another version for World Trademark Review:

Apparently the Talk to Chuck campaign was quite successful too. But all good things come to an end, as the campaign was dropped in 2013, in favor of its current tagline: Own Your Tomorrow:

What I wondered was whether Charles Schwab had continued some (even modest) use of the Talk to Chuck tagline — to retain enforceable rights — or whether it simply chucked them out, since Mr. Hughes didn’t seem at all deterred with his apparent introduction of TradeLikeChuck.com in 2016.

Although there still may be valid use of Talk to Chuck that I’m unaware of, the visible signs all seem to point toward abandonment. The TalkToChuck.com domain name was originally registered back in 2005, yet today, it only redirects to the main Charles Schwab website with no visual Talk to Chuck reinforcement, so that mere redirection, shouldn’t constitute bona fide trademark use.

Perhaps even more importantly, searches for “Talk to Chuck” on the Charles Schwab website yield no results: “There are no results for ‘talk to chuck’.” And, each Talk to Chuck federal registration and application was allowed to expire or become abandoned (here, here, and here).

Why didn’t Schwab see some value in taking steps — even modest ones — to avoid abandonment of its federally-registered rights? Do you suppose Mr. Hughes has Schwab regretting that decision?

What if the web traffic to the Charles Schwab financial services site still had meaningful redirection coming from the TalktoChuck.com domain name, would that help establish lingering goodwill?

In the end, to “own your tomorrow” — from a trademark perspective — even when you’ve moved on to a new tagline, it might pay dividends to develop an intentional plan to avoid abandonment.

Otherwise you might as well roll up those rights into a round little wad of paper, and hurl them to your doggie with one of these federally-registered Chuckit! babies (here, here, and here):

The weekend of October 20-21, 2017, the Minnesota Golden Gophers and North Dakota Fighting Hawks traded wins in one of college hockey’s most competitive series. While watching the NCHC broadcast, an ad for the “Sioux Shop” appeared on screen. The ad explained that the Sioux Shop sells North Dakota fan gear at Ralph Englestad Arena (affectionately referred to by North Dakota fans as “the Ralph”), the 400,000 square foot, first-class hockey palace in Grand Forks where the Gophers and Hawks were facing off. I was surprised by the ad, especially in view of the fact that the University of North Dakota is no longer referred to as the “Sioux.”

Picture credit: Pinterest.

The Sioux Shop ad also reminded me of a recent experience I had when flying Southwest Airlines, in which a gate staff member was wearing a Fighting Sioux lanyard. As many frequent Southwest fliers can attest, Southwest’s employees often wear memorabilia of their favorite sports teams. I asked the staff member where she got the lanyard, as it appeared to be new. She replied that the University is still licensing the mark so as not to abandon it and that she picked it up from a licensed merchandiser. Apparently, you can also buy Fighting Sioux gear on Amazon.

As many hockey fans know, the University recently changed its mascot to the Fighting Hawks, from the Fighting Sioux, after backlash from the NCAA and a statewide ballot initiative approved the change. The “Fighting Sioux” is also one of several arguably-disparaging marks based on Native American culture that have been criticized in recent years. For example, the Fighting Sioux trademark is similar to the R-word trademark, which was challenged and later upheld by the U.S. Supreme Court this summer. With this political and legal background in mind, I thought to myself when watching the Sioux Shop ad, “Didn’t North Dakota change it’s sports mascot to the Hawks, and, if so, why does the fan shop still bear the ‘Sioux’ name? Can NCHC, an NCAA conference, even run an ad for a shop selling merchandise bearing a name similar to one that the NCAA singled out as ‘hostile or abusive’?” Just what is going on here?

It turns out that the Southwest staff member was right: the University still licenses the Fighting Sioux trademark so as to avoid abandonment. The reasons appear to be threefold: First, the University agreed in a 2007 settlement with the NCAA that it would maintain the Fighting Sioux trademark. Second, the school appears to be concerned that if it does not license the trademark and control the flow of Sioux merchandise, someone will flood the market and stymy efforts to phase in the Fighting Hawks mascot and phase out the Fighting Sioux mark. Ironically, then, in order to effectively stop using the Fighting Sioux name, the University must “use” the mark. Third—and perhaps this is unfair cynicism—money.

The Lanham Act provides that a trademark may lose its viability through abandonment when the holder of the mark both discontinues use of the mark and intends not to resume use of the mark. See 15 U.S.C. § 1127. The law states that nonuse for three consecutive years is prima facie evidence of abandonment. See id. Clearly, the University hasn’t run into that issue yet. However, the issue that the University does face is whether it is making a “bona fide use” of the Fighting Sioux mark “in the ordinary course of trade, and not made merely to reserve” its right in the mark. Id. Reductions in the use of a mark may contribute to a finding of both prongs of the abandonment test. So can failure to take action against infringers. Of course, whether a reduction in use and a change in the scope and extent of licensing shows abandonment depends on the facts and circumstances of each case.

The University’s current licensing strategy definitely toes the blue line on bona fide use. It appears that the University is only licensing productions of 9,000 pieces of merchandise at a time and in limited auctions. Such small offerings surely dwarf those available to fans in the years leading up to the mascot switch. On the other hand, the offerings are in the same category: sportswear. The geographic range of the sales is also smaller than before. In addition to the practically-discontinued use of the mark, the University’s licensing also seems disingenuous. One reason for maintaining the mark is to control the supply of Fighting Sioux gear competing with Fighting Hawks gear, and I’m not sure that purpose shows intent to use the Sioux mark (rather than mere reservation of it). I’m also skeptical that using the mark is helping transition efforts; as one source reports, new Fighting Sioux gear has been known to sell out very quickly, and fans continue to cling to the name–not to mention the Ralph, which has over 2,500 Sioux logos plastered throughout the arena in fulfillment of its late eponymous benefactor’s desire to protest a mascot name change.

Whether the University’s current use of the mark can stave off the threat of abandonment, while at the same time render the Fighting Sioux mark obsolete, remains to be seen. For now, North Dakota hockey fans are stuck between two mascots, and neighboring rivals look on in confusion, with no clear end in sight.

The U.S. Patent and Trademark Office register contains a lot of dead weight. In order to obtain a trademark registration and maintain the registration, the owner must use the mark in U.S. interstate commerce (as always, with a few limited exceptions). What constitutes dead weight? Usually marks that are currently registered, but not actually used in commerce. These registrations could be identified in a preliminary clearance search by your attorney, causing you to choose a different name rather than the one you really want. The registration might be cited against your application, forcing you to choose whether you’d like to embark in a Petition for Cancellation of the registration, or just move on to a new name. If you or a client has ever found yourself in one of these positions, the USPTO is considering expanding the available options to remedy the situation and is seeking public comments.

Uncle Sam TTAB Poster

There is a need for a streamlined procedure for cancellation of registrations for claims of non-use or abandonment. With the ease of online filing, the number of trademark registrations has risen significantly, issuing at a rate 4,500 per week.  Beginning in 2015, the USPTO also began issuing to owners courtesy reminders informing them that the maintenance and renewal windows are now open. To be honest, it’s pretty easy to file a trademark application, obtain a registration, and maintain a registration. You can do it all electronically through the USPTO website.

Yet, it is also very easy to do it incorrectly, rendering that Certificate of Registration to be a worthless piece of paper – that’s where we attorneys add value. For example, an attorney can help determine whether a mark is actually used in commerce at the right time. The USPTO doesn’t have the time or resources to investigate whether a mark is in use, so the fact that the USPTO accepted a specimen does not provide any cover. To obtain the registrations, Applicants and registrants need only click a box acknowledging that the mark is in use, and provide a sample (aka, specimen) of how the mark is used in commerce. Even if the USPTO accepts the specimen and issues a Certificate of Registration, that registration could be cancelled if the mark was not used in commerce at the relevant date.

The risk of doing it incorrectly doesn’t stop third-parties from continuing to register marks that have questionable claims of “use in commerce.” There’s a vast array of individuals and entities with deadweight registrations. The first group that comes to mind are the registrations that you know aren’t used just based on looking at the registration. For example, the individual that claims to provide space travel services and owns dozens of registrations for various FUTURE trademarks in connection with a wide variety of goods and services, including space travel services and manufacture of space vehicles. As you might guess, the specimen that was accepted by the USPTO is, at best, questionable:

future - edited

 

Then there are the “Golden Ticketers.” These are people and entities that seem to have a plan to later sell or license one of their many marks that, again, have questionable claims to use in commerce. These commonly happen when a well-known brand has a new product, or may need to rebrand, for example, the Washington Redskins. There are a number of trademark registrations for a various WASHINGTON ___ marks with dubious claims to use in commerce, like the WASHINGTON ARROWS, AMERICANS, FOUNDERS, NATIVES, PANDAS, MONUMENTS, VETERANS, RED-TAILED HAWKS, and the WASHINGTON FEDERALS. Most are registered in connection with “Providing a website featuring information relating to the sport of football.” And as you can tell from the owner’s website, it is technically in use:

arrows

It provides helpful information regarding the sport of football, including pertinent details like “The team with the most points at the end of the game wins.”

In light of this, the USPTO has good reason to implement a new method of challenging registrations for non-use. While I encourage everyone to read the Notice in full,  here are the highlights:

  • The new procedures are limited solely to claims of abandonment, or non-use for some or all of the goods/services at the time the declaration of use in commerce was filed (application date for a 1a application, or the Statement of Use for a 1b application)
  • The Petitioner must include evidence supporting the claim of abandonment with the Petition
    • Evidence might include a declaration detailing searches for use of the mark
  • The Respondent must include evidence to rebut the claim in its answer
  • If requested and upon a showing of good cause, the TTAB will grant very limited discovery
    • The Respondent can also challenge the Petitioner’s standing and request limited discovery on this issue
  • The proceeding is designed to move fast:
    • Limited or no discovery
    • Abbreviated schedule
    • No oral hearing
    • Only one extension request per party
    • Estimated time from start to finish would be 70 days in the event of default, or 170 days for a contested Petition
  • No counterclaims would be allowed
  • After reviewing the Answer, the Petitioner could choose to convert the proceeding to a full cancellation (the Respondent does not have the option, though)

Overall, the proposed procedure could be a valuable tool, at least in those situations where non-use and abandonment are clear, or the mark has not been used for three years or more. However, where the period of non-use is less than three years, the petitioner would normally need to establish that the respondent had an intent not to resume use of the mark. The limited discovery granted by the TTAB would likely require some testimony on behalf of respondent with respect to intent to resume use. Regardless, if the TTAB implements the new rules, practitioners would have a cheaper, more time effective tool to clear the way for their client’s trademarks.

If you have any comments on the new rules, be sure to provide them ahead of the August 14, 2017 deadline to TTABFRNotices@uspto.gov.

 

A recent stroll through a big box store opened my eyes to a brand of steel toe boots I hadn’t encountered before, take a look at the CAT that will be protecting my son’s toes this Summer:

CatBoot

CAT is an excellent example of successful trademark truncation, a single-syllable truncated brand name for the four-syllable CATERPILLAR version (originally for heavy excavation equipment):

CaterpillarBoot

By the way, I love how the brand intelligently employs both versions (full and truncated) of the brand name on the goods and packaging for the goods. It permits Caterpillar Inc. to own trademark rights in both versions without risking a loss of trademark rights through abandonment when a truncation might otherwise lead to a complete phase out of the longer version.

Caterpillar Inc. also has built an impressive mountain of trademark protection for both word mark and stylized versions in many different classes of goods and services; the brand recently has asserted an impressive scope of rights. It also clearly thought about and began executing a truncation strategy nearly seventy years ago, with this very early CAT registration. Sad we won’t be seeing (again) bikes, trikes, or wagons, at least in the near future, it appears.

To be clear, brand owners should know there is no legal right for a business to be able to truncate a longer brand name, nor can one assume all brand extensions are legally viable.

As we have discussed before, a truncation strategy can make enormous sense, in part, because truncation yields a broader right (if allowed). However, it also can lead to more third party objections since there is necessarily less other matter available to help differentiate from others.

For these reasons and others, it is important for brand owners to jump in with both boots and move on the appropriate level of due diligence, not assume that the path for truncation and/or brand extension is a clear one (without the need for heavy excavation of the existing trademark landscape).

AnatomyofTMWarning

We wrote about the above trademark warning ad a few years back, and the claimed trademark owner likely recognizing vulnerability as to validity:

The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.

Now, the validity of Car-Freshner Corporation’s federal non-traditional trademark registrations for the shape, configuration, and silhouette of a tree design, are seriously being questioned.

Sun Cedar, a non-profit based in Lawrence, Kansas, with the able pro-bono assistance of Marty Schwimmer of the Leason Ellis firm, has filed an answer and counterclaim in federal district court in the Northern District of New York, denying Car-Freshner Corporation’s allegations of trademark infringement, dilution, and unfair competition, and seeking cancellation of U.S. Reg. Nos:

on functionality grounds, and the ‘016, ‘233,  ‘888, and ‘854 registrations on abandonment grounds.

You can read more about this trademark dispute here at Techdirt — calling it another example of trademark bullying.

Here is an image of the Sun Cedar product that is alleged to infringe and dilute Car-Freshner Corporation’s federally-registered trademarks in the so-called Little Trees design:

SunCedarTree

A few questions come to mind.  Would you have put your non-traditional trademark rights at risk for the above alleged infringement?

Will the registrations be exposed to have ticking time bombs inside them?

If so, will Marty declare timber! as they fall and then gather up the debris to stack like cord-wood?

Or, will there be a mixed result, and if not chopped down altogether, might the registrations simply be chopped down to size.

Endless possibilities abound, so stay tuned, this is sure to be an interesting one.

Back in the 1960s, Pepsi burst onto the scene by announcing to the youth of decade that they were the Pepsi Generation (they didn’t have a choice). Then, in the 1980s, Pepsi became “The Choice of a New Generation.” And finally, in the late 1990s, Pepsi hitched their trailer to the surely-to-never-go-out-of-style Spice Girls to announce the arrival of GeneratioNext. I am a little rusty on my LSAT logic games, but I think this means Pepsi’s newest marketing idea will be GeneratioNexter. Or maybe Generation Kitty-Wampus.

Yet it looks like Pepsi is a bit more creative as their newest marketing idea took a different path. What if, instead of moving forward in time, Pepsi moved backward in time? Presumably this was the idea behind Pepsi’s coy suggestion this week that it may be bringing back Crystal Pepsi. Yes, this Crystal Pepsi:

CrystalPepsiFamily

Maybe the best way to guarantee future success is to revive past failures. Crystal Pepsi was intended to be a healthier soda. Back then, people wanted natural and healthy options! But they didn’t want something that was too healthy, so it still had to be a soda.  Pepsi attempted to further this “natural” image with this slightly dated television commercial back in 1992:

And in case you had the same thought as me (“Didn’t SNL do a great spoof of this commercial?”) Yes, you can view it here, and it is superb. Unfortunately for Crystal Pepsi, though, it was pulled from shelves less than two years later.

So how did this resurrection happen? And is it really happening? A social media campaign reportedly led by LA Beast seems to be partially to blame. The Pepsi Twitter account tweeted the following letter, which appears to be written with a typewriter on letterhead left over from 1993 (hopefully intentionally, if so, kudos to you Pepsi marketing):

Crystal pepsi letterAccording to Pepsi, the letter is authentic. And Crystal Pepsi wouldn’t the first soda to be brought back from the dead: Coke revived Surge earlier this year, also due to social media demand. But Pepsi hasn’t official announced a comeback, so perhaps it is just a media ploy and there really is no intent to begin selling Crystal Pepsi again.

Which got me thinking. Somewhere out there, someone is wondering whether they can start selling Crystal Pepsi before Pepsi does. Pepsi hasn’t sold Crystal Pepsi for over 10 years without any apparent intent to resume use until recently. The facts suggest a plausible basis for a claim of abandonment (a previous DuetsBlog post addressing abandonment is available here). A quick search of the U.S. Trademark Office reveals that Pepsi has abandoned any rights to any registrations or applications. So is our hypothetical user in the clear?

Unfortunately, this is a bad example as Pepsi has not abandoned its rights in its PEPSI mark. But what if it had been a stand-alone brand, like Surge? Would Pepsi still have rights in the trademark even though it hasn’t been used in over ten years? We’ve briefly discussed the concept of persisting recognition (or residual goodwill) in the past. Like most legal questions, the answer is “it depends.”

For purposes of registration, the Trademark Trial and Appeal Board does not recognize the doctrine. In fact, just recently, the Board cancelled a registration for the mark NAUGLES, owned by Del Taco, reasoning that:

Lastly we note that Respondent contends that it holds “considerable goodwill” in the Naugles mark, sufficient to defeat Petitioner’s claim of abandonment. The Board has never found residual goodwill to be a defense to abandonment, and we decline to do so here. The continued existence of enthusiasts of the old Naugles food items does not negate the statutory presumption of abandonment.

In that case, Del Taco claimed that even though it had closed the Naugles restaurants after merging back in the early nineties, that it still had legitimate rights twenty years later. The company claimed that the “History” portion of its website showed continued use, as well as its sale of promotional clothing. Del Taco’s best argument appears to have been that consumers could still order of the “Secret Naugles Menu,” which meant that consumers would request food entrees that were previously offered by Naugles. But not even the secret menu used the Naugles mark, instead, it consisted of orders like “a bun taco” or “egg burrito.” The Board did not find Del Taco’s evidence of use convincing, although maybe the Board informed Del Taco that they might still be eligible for a “Secret Naugles Registration.”

But what about outside the registration context? The Fourth Circuit has suggested that the potential for residual goodwill depends on the product, reasoning that:

Because fire trucks have very long lives (often twenty to thirty years), the mark stays visible, and the good will value of the mark persists long after production of trucks with that mark has ceased. Thus, it might be reasonable for a fire truck manufacturer to spend five or six years considering the reintroduction of a brand, even though the same passage of time would be unreasonable for a maker of a more ephemeral product, say potato chips

Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 537 (4th Cir. 2000). In contrast, though, a California court found that eight years of non-use of the COBRA mark in connection with cars constituted abandonment. Shelby v. Ford Motor Co., 28 USPQ2d 1471, 1475 (CD Cal. 1993).

Unlike Pepsi’s new/old refreshment, the precedent here is a bit murky. I guess we’ll just have to wait and see Pepsi’s next steps before we move forward with DuetsBlog Crystal Soda.

It isn’t often that Forbes and Arcade Sushi are reporting on the same story. But some news is so big, so ground breaking, and so important that all media outlets cannot, in good moral consciousness, fail to comply with their duty to inform the public. Obviously, I’m talking about Microsoft’s potential reboot of the Battletoads franchise.

For those of you who wasted away the early 1990s not playing video games, (shame!) the Battletoads video game franchise centered around three mutant toads (Rash, Zitz, and Pimple), trained in marital arts, who fought against evil doers. And I can assure you that any and all similarities between these characters and the Teenage Mutant Ninja Turtles are purely a coincidence. The video game’s developer, Rare, has said so and they certainly would have no incentive to lie.

The game was first released in 1991 on the original Nintendo (of the Entertainment System, or NES, variety).  And it was a big hit. Gamers loved it, even though it is considered one of the most difficult video games to beat, even still today. Yet despite the popularity, the last home console video game was released in 1993, while the last Battletoads video game ever was released in 1994 as an arcade machine. And then, nothing.

But the fans continued to praise the game. From 2010 onward, gamers and media organizations continued to place Battletoads as one of the top games that should be remade on a new system. Among the advocates were Game Informer, Maxim, GameRevolution, SiliconEra, and yes, even Forbes. Sounds like a great idea. But who owns the rights to the game?

Turns out, Microsoft – maybe. Rare, the game’s original developer, is a British game developer that has been around since 1985. However the company was purchased by Microsoft in 2002 for $375 million. And now, after 12 years of waiting, Microsoft may be bringing the Battletoads back. Where is all the speculation coming from? Well, it turns out that just last week, Microsoft filed an application to register the mark BATTLETOADS in connection with video game software. And let the rumor mills begin (and continue, and continue).

The response from Microsoft when reached for comment?

Microsoft often acquires various trademarks as part of its ongoing business strategy, but beyond that we have no comment.

So, case closed. Microsoft owns Battletoads. Probably. They presumably purchased all of Rare’s copyrights and trademarks, even if Rare/Microsoft hasn’t produced a Battletoads video game in exactly 20 years. Which of course raises the question of whether the trademark had been abandoned. Could a rival game-maker have produced their own video game last year and called it Battletoads?

Under the Lanham Act, abandonment occurs when “its use has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127. However, three years of non-use creates a presumption of abandonment. Well, by my lawyer math: 20 > 3. But of course, there are always exceptions. For example, continued sales of older products can constitute use of the trademark, attempts to license or sell products or the rights to the trademark can also weigh in favor of a finding of non-abandonment.

Some courts treat the issue as whether there is “continuing recognition” of the mark by the public. This is more common with out-of-production automobiles, in part due to their expensive nature, continued production of parts, and continued provision of repair services.  Those factors aren’t quite so strong with video games. However, based on the continued public outcry for more Battletoads, it is hard to deny their isn’t any continuing consumer recognition or residual goodwill in the Battletoads mark.  So maybe, just maybe, it was a good idea I didn’t quit my job last year to release my own Battletoads video game. It would have been fun, but I avoided a potential trademark battle (along with likely claims of copyright infringement, too, for the Battletoads characters…).

Over the last few years, American business appears to be in love with recycling. We’ve seen remakes for nearly every super hero movie (even remakes of remakes with Spiderman and the Hulk). Dodge has resurrected the Challenger. And now Microsoft has brought the Battletoads back to life. Will this be the start of a new rush to buy up rights to old video game titles?

I’m not sure. But my guess is that it will be difficult to buy copies of Battletoads on eBay for a while. Almost as difficult as beating the game.