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?

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):

Like many industries, there has been much brand consolidation. The petroleum industry is a good example. I recall pumping gas in Iowa back in the late seventies — at a Phillips 66 gas station (recall that a couple of years ago Phillips merged with Conoco). While pumping gas in those days, I vividly remember long gas lines and the price of gasoline doubling between 1978 and 1980.

One gas station brand I thought was long dead, at least until last week: Standard — I specifically recall Standard gas stations being converted to Amoco stations in the Midwest, and then Amoco stations were later converted to BP.

So, imagine my surprise on our recent family trip to Las Vegas, when I snapped the photo above from the In-N-Out Burger parking lot: Standard brand positioned above the Chevron logo?

Then, imagine my further surprise, in researching the history of the Standard Oil Company, to see the same Standard/Chevron gas station signage depicted on Wikipedia, shown below. The photo below appears to have been taken on October 4, 2009, and although the price of gas hasn’t doubled since then, you’ll note the sizable increase over the last two and a half years.

According to the Wikipedia posting, “Chevron Corporation operates several gas stations under the trademark ‘Standard’ in order to retain control over its former trademark (as U.S. trademark law operates under a use-it-or-lose-it rule). This one is located in Las Vegas, Nevada, just west of the Las Vegas Strip.” It also indicates, this example is “[o]ne of 16 Chevron stations branded as ‘Standard’ to protect Chevron’s former trademark.”

As we have said before, serious trademark owners develop plans to avoid trademark abandonment when brands are acquired, merged, and/or consolidated. No doubt, Chevron is a serious brand owner with an apparent plan in place to avoid abandonment of the Standard trademark. Notably, the Chevron website indicates: “Our company proudly sells petroleum products around the world under the Chevron, Texaco and Caltex brands.” No mention of Standard, at least that I could find. Perhaps because — according to the Wikipedia post for Chevron — only 16 of some nearly 10,000 Chevron/Texaco retail gas stations operate under the Standard brand name.

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.

What do you think, is operating 16 gas stations out of 10,000 (0.16%) a token use made “merely to reserve a right in a mark,” or a very carefully and intelligently calculated “bona fide use of a mark in the ordinary course of trade” for the retail petroleum industry?

For some additional reading on trademark abandonment issues, see:

Dialing in on Trademark Abandonment?

Timeless Trademarks?