by Shubha Ghosh, Crandall Melvin Professor of Law and Director, Syracuse Intellectual Property Law Institute
As companies voluntarily retire their offensive trademarks, two questions tug at whatever passes for a conscience nowadays. First, can these undesirable marks come back, revived by whomever sees a market niche for these symbols? This may seem like a ridiculous possibility, but on June 21, 2020, an Intent to Use Application was filed on the word mark “Aunt Jemima” by Retrobrands, a Florida LLC, whose mission “is to revive ‘abandoned’ consumer iconic brands and to bring them back to the marketplace.” The second question is, do these intellectual property mea culpas do any good in the face of companies like Retrobrands and the entrenched nostalgia it represents? After all, gallons of maple syrup were transformed into Benjamins, even more Tubmans, over the years. Should not there be some disgorgement in the form of reparations?
The proposed doctrine of vestigial use under federal trademark law can address both questions. As described below, vestigial use can prevent trademark abandonment, which would potentially allow some enterprising cultural chauvinist from appropriating the mark. Vestigial use, as applied, can also provide a new revenue source that can finance the necessary reparations.
A vestigial use is the use of a mark to maintain the memory of a brand. Instead of offensive symbols littering the shelves of your local grocery store, they can be relegated to a museum. The idea would be similar to that of Budapest’s Memento Park, where the brutalist statues from the Soviet era have a fitting resting place, about a forty minute bus ride from the Budapest bus terminal in a rural outskirt more habitable than Siberia but just as overlooked. Memento Park is a reminder of ideas gone woefully wrong.
Vestigial use would allow a trademark owner to continue using a mark without completely abandoning it. A trademark owner can claim continued use of the mark as a curator with the once fully commercialized mark relegated to a virtual museum. Retired offensive marks would be hidden away, but still can serve as a reminder of what was once bought and sold freely in the United States. History is neither erased nor glorified. Instead, these marks become objects of study, specimens of bigotry past and continuing. These vestigial marks would have a place on a pedestal much like Uncle Tom’s Cabin, Huckleberry Finn. The Yellow Wallpaper, Native Son, and To Kill a Mockingbird have a protected place in public libraries. Like these books, vestigial marks benefit the public through their presence, serving as the occasional fodder for those who like to ban cultural relics and as a constant memento of a persistent ugliness.
I envision vestigial use as a judge-made doctrine, although with some imagination an appropriate statute could be drafted. It would allow trademark owners to defeat a claim of abandonment by someone who seeks to take up the mark. Under section 1127 of the Lanham Act, abandonment occurs when a mark’s “use has been discontinued with intent not to resume such use.” The provision defines use as “the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.” If vestigial use were adopted, a trademark owner’s showcasing the history of the mark would count as bona fide use. For offensive marks, owners like Quaker Oats, or its licensees, could create the equivalent of a Memento Park while blocking others from adopting the mark for full profit-making branding.
Vestigial use is necessary because failure to commercialize the mark may constitute abandonment under current doctrine. If Quaker Oats used the Aunt Jemima mark solely as a museum relic, that would most likely constitute a discontinuation of the mark “with an intent not to resume such use.” Under the Lanham Act, use requires the goods labelled with the mark “are sold or transported in commerce.” Vestigial use of the mark would not require sales or transportation in commerce in the traditional sense. In fact, vestigial use presumes the mark is removed from the national mass market associated with the establishment of trademark rights. However, an archival use entails interested viewers going towards the trademarked product much like visitors to a museum. Instead of many products transported to purchasers, vestigial use entails many purchasers travelling to view the archived mark. The mapping is not from many marked goods to many purchasers but from many viewers to the one marked product.
As far as analogies go, this is admittedly a stretch. But if trademark law is about creating and protecting associations, it is not completely clear why the law’s protection should be limited to the many products going out to many buyers. First, there is nothing sacred about many to many; trademark law protects marks on niche products, even in markets with a few consumers. It is also not clear why the transportation has to be from product to buyers. Trademark law protects marks on websites which are unique objects which attract buyers. The transportation requirement under the statute encapsulates the many consumers going to a single branded product. Vestigial use is a possible interpretation of the statute.
But possible does not mean highly probable. Courts may be hesitant in reinterpreting the use requirement to make it ostensibly easier to obtain rights. My proposal, however, is limited to applying vestigial use as a limitation on abandonment as opposed to lowering the use requirement for registration or demonstrating ownership. Potential evisceration of the public domain may also be the concern. Vestigial use sounds like warehousing of marks. But the proposal requires some affirmative act of the mark holder, namely a memorial or curated use. Furthermore, the public domain is a strange status under trademark law. An abandoned mark is not really in the public domain. As Professor Gerhardt argues in her blogpost, Quaker Oats would have rights under 1125(a) against companies like Retrobrands. Vestigial use is designed to prevent new users from fully recapturing supposedly abandoned marks.
Picking up on the public domain point, some policy makers may turn to genericide as the appropriate doctrine to put these offensive marks to rest. Arguably the racial stereotypes underlying “Aunt Jemima” or “Eskimo” are generic signifiers for outdated and commonly understood denigrating tropes. However, genericide means that the mark refers to the genus to which a product belongs, not about the signification of marks. Consequently, genericide is not practically suited to put to rest generically offensive marks.
Even if the proposed doctrine of vestigial use is unconvincing, analyzing it reveals the underlying problem. One reason for posts like this is that the Supreme Court’s decision in Tam rules out the possibility of denying registration or other trademark protections to offensive marks. According to the Court’s logic, “Aunt Jemima” is just another viewpoint under the First Amendment, and viewpoints do not ever really disappear. Their persistence is evinced by companies like Retrobrands and the recurring terms of the current public discourse. Vestigial use acknowledges the persistence of offensive discourse, despite all good intentions. Appropriating this persistence through trademark protection for memorial uses is a reminder of the terms of the cultural and political debate, Memory may at some date lead to the substantive economic and political reforms needed to combat inequality and bigotry. Marks are never dead, and the past is never past, even if undistinguished.