Friday, March 1, 2019

The Umbrella Academy and Abandoned Trademarks

            I was watching an episode of Netflix’s The Umbrella Academy when a familiar name appeared on a store sign: Gimbel Brothers Department Store. For those unaware, Gimbel Brothers, and its shorter version Gimbels, was a popular department store chain decades ago. Personally, I’m intrigued by Gimbels for a few reasons. First, it traces a substantial part of its origins back to Milwaukee, where I currently reside. Second, it expanded into a large national chain, and even acquired other retailers that still operate today. And, third, it shut down operations in 1986.
            I’d like to discuss that third point today. One of the defining characteristics of trademark law is that you must continually use the trademark in commerce. If you continue to use the trademark in commerce, then your trademark is protected. However, if you cease using the trademark in commerce, then it can be considered abandoned and anyone can use it. Under the federal trademark law, aka the Lanham Act, a trademark is presumed abandoned after three years of non-use or if the trademark owner discontinues use of the trademark with an intent not to resume use.
            I find it fascinating that Gimbels, a trademark abandoned in 1986, or thereabouts, continues to live on in popular media. Because of the store’s former fame, the Gimbels name resonates with consumers and provides an air of realism to the media it appears in. While Gimbels did appear in some popular media before its closure, notably Miracle on 34th Street, since closure the store has been featured or referenced in the film Elf, as well as the television shows Happy!, The Goldbergs, Once Upon a Time, The Simpsons,[1] and, now, The Umbrella Academy.
            Once a trademark has been abandoned, others are free to use it or register it as a trademark. Theoretically, the appeal of using the Gimbels or Gimbel Brothers name is because the store is no longer operating, and people using its name in media wouldn’t need to worry about infringing on its trademark or damaging its goodwill.
            However, it turns out there is still a store bearing the Gimbels name. It is a small shop based in Maine, called Gimbel & Sons, and it was once sued by the Gimbels department store for trademark infringement.[2] The lawsuit was dismissed, and the Maine store was allowed to continue using its name provided it attached a sign stating it was not affiliated with the bigger department store chain. After Gimbels went out of business, the Maine store acquired the federal trademark registration for Gimbles Department Stores and has licensed it out to Hollywood, reportedly receiving $5,000 for its use in Elf and also licensing it for use in The Goldbergs.[3] I have not been able to determine if The Umbrella Academy licensed the name or attempted to skirt the issue by using the full Gimbel Brothers Department Store name on store signage.
            It’s yet another reminder that if you are seeking to register a trademark or claim trademark protection for your book, brand, or goods, continued use of the trademark is a must, and if you are thinking about using an abandoned trademark, it’s worth your time to make sure it’s actually abandoned. 


1 comment:

  1. Umbrella Academy skirted by using Gimbel Brothers. I currently work for Gimbels of Maine AKA Gimbel and Sons. The “Gimbel” passes away a few years ago. One of his sons took over and now runs the Gimbel and Sons Country Store, Smiling Cow and Windjammer Emporium in Boothbay Harbor.