Trademark “abandonment” is what happens when a trademark owner stops using a mark without the intention of using it again. Abandonment can occur in more ways than you might expect. The most obvious is simple non-use, but abandonment arguments are often built from surrounding conduct as well, such as public statements that a brand is being retired, licensing a mark without any real quality control, or allowing a mark to drift so far that it no longer identifies a single source.
Whatever the cause, by abandoning a trademark, the trademark owner loses control over its brand, creating what is referred to as a “zombie” trademark. Theoretically, a zombie trademark is free for the reviving. Resuscitating a zombie trademark can be commercially effective, particularly if it was a well known brand and your aim is to leverage nostalgia. But beware, there are pitfalls. The prior owner may argue that it never abandoned the trademark, despite all signs to the contrary (such as they are no longer selling the product or service associated with the mark). Here’s a recent example involving a well-known, dearly missed trademark, “Twitter.”
You will recall (how can you forget) that in 2023, Elon Musk purchased Twitter and renamed it, X. It took many by surprise given the ubiquity of the Twitter trademark. But it kind of made sense. The X mark was Musk’s long-running master brand. Here are some examples: X Corp., SpaceX, Tesla Model X, xAI, and X.com. All are Elon Musk brands.
Given the branding framework developed by Musk, it appeared that the Twitter brand was indeed dead. That’s what members of the so-called Project Bluebird believed, too. Project Bluebird is a Virginia startup company run by attorney Michael Peroff and former Twitter General Counsel Stephen Coates. The goal of Project Bluebird is to revive the Twitter and Tweet brands and then relaunch a new social media platform call Twitter.new. To start the process, Project Bluebird filed a cancellation petition with the Trademark Trial and Appeal Board (TTAB) to cancel X Corp’s ownership of the TWITTER and TWEET trademark registrations.
It’s a strong petition, beginning with Elon Musk’s own words, “And soon we shall bid adieu to the twitter brand and, gradually, all the birds.” (Elon Musk Tweet dated July 23, 2023). Project Bluebird alleges that it wants to create a new social media company; it’s being damaged by X Corp.’s continued ownership of the registrations for Twitter; X Corp. has abandoned the marks with no intention to use them; and its continued use of the marks constitutes a fraud on the USPTO. The petition, if you are interested in reading it, recounts the history, popularity, and demise of the Twitter brand.
Not to be outdone, X Corp., rather than responding to the Petition to Cancel before the TTAB, filed a separate lawsuit this December against Operation Bluebird in the Federal District Court of Delaware. The complaint alleges that TWITTER is “one of the most valuable . . . assets in tech” and that the TWITTER brand is “alive and well” and “not ripe for picking”. X Corp. claims use of the mark because the TWITTER.com domain is in worldwide continual use (it redirects users to X), the TWEETS and TWITTER marks appear on both consumer and client-facing webpages, and it continues to be “one of the world’s most recognized brands”. Finally, X Corp. alleges that Project Bluebird is damaging it by confusing consumers and trading off the TWITTER brand’s goodwill, which belongs to X Corp. It will be interesting to see how the parties and court address these issues in the new year.
So, reviving a famous trademark is never risk-free. Even when a brand appears dormant, even publicly disavowed, the former owner may still claim residual goodwill, ongoing use, or an intent to resume use. Any party seeking to revive a “zombie” trademark must be prepared to litigate not only abandonment, but the meaning of “use” itself. For brand owners, the lesson is equally clear: if you intend to kill a brand, do so carefully, or risk watching someone else try to bring it back to life.
— Adam G. Garson, Esq.