Vestigial Use

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.

10 thoughts on “Vestigial Use

  1. 8

    “gallons of maple syrup were transformed into Benjamins,”
    That anyone would think Aunt Jemima = maple syrup is hilarious.
    The author clearly hasn’t had Aunt Jemima syrup or is not very discerning.

  2. 7

    I would recommend reading the history of who Aunt Jemima was before labeling the mark “offensive.” Have cultural norms shifted so as to make the mark less accepted than in the past? Perhaps, but terms like offensive and racist get tossed around too freely.

    1. 7.1

      Somehow people have developed this odd sense that there is a Right not to be offended.

      And not coincidentally, some of the “anti-Racy Ism” stuff is also some of the MOST Racy Ism stuff out there.

      A call for drivel and a call to shut down critical thinking are a toxic combination.

  3. 6

    Hmm, off the top of my head, it would seem to me that setting up one or more of these “memento parks” of such products, especially where the trademark owner provides the products and, most especially, if they also provide the replacement product, is, in itself, a form of marketing? While there may be historical significance, the fact is that, at least inherently, they are still using the old mark to market and drive the audience to the new product. Isn’t that proper trademark usage?

  4. 5

    Given trademark law’s less than robust history under the Commerce Clause, how would vestigial use be constitutional and not at odds with the First Amendment? And if vestigial use is constitutional under the CC, why isn’t it OK to register marks with just intent to use?

  5. 4

    As noted in comment 1.1 in the immediately prior blog, there already exists an inexpensive type of vestigial use trademark retention, to continue to hold an established incontestable trademark registration, simply by continuing a small number of sales of the marked goods from time to time.

  6. 3

    What an utterly absurd idea. TMs exist to indicate the source of the goods. If someone wants to abandon that mark, whether because they stop selling the product or they thing a different mark will be better, then they abandon the mark, and it’s free to the public (unless someone else claims it and uses it). The abandoner shouldn’t get to control history too by controlling the mark after they’re no longer using it.

    It’s bad enough that copyright is keeps getting extended indefinitely, to allow e.g. Disney to continue to control the release of films made in the 1940’s, and that it’s been expanded to cover computer code. There’s no need to make a similar mistake vis-a-vis trademarks.

    1. 3.1

      Agreed. So what’s next? The doxing? The mob at your door for such disagreement? Getting you fired. You can’t disagree here, their whole point of view is just dripping with their superior virtue and ‘correct’ think. And this coming from a professor of law. There was a time when a professor of law was to be a bulwark against what is now cancel culture, in other words a defender of free speech and ordered liberty. A higher calling. Like when John Adam’s represented the British soldiers in Boston.

  7. 2

    …as I have discussed with family members who have served in our nation’s military, the right to offend (through speech) is every bit a part of our First Amendment, and those who have fought and been willing to give up their lives to protect that amendment have also willingly been doing so to protect those that would offend them.

    That we have serial professors of law that turn a blind eye to the full gamut of the meaning and intent, that would instead ‘weaponize’ a tragedy to advance their own viewpoints, is even more appalling that the offensive speech that they would use as their vehicle.

    Mow down those laws…

  8. 1

    Should not there be some disgorgement in the form of reparations?

    Wow – beyond virtue signaling…

    Sir Thomas More called.

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