CPG World Should Pay Attention to Risks and Opportunities Related to ‘Retired Brands’

Peter Kirschenbaum

If the retired brand previously was used in a clearly distinct field, this broadens the possibilities.

Manufacturers, distributors and retailers of consumer packaged goods (CPGs) should weigh the legal considerations around trademarks that have faded from the marketplace, whether the goal is to protect their own “retired” brands from infringement, or to reintroduce such marks themselves, writes LeClairRyan attorney Peter C. Kirschenbaum in the early-November issue of industry publication CPG Matters.

In some cases, brands vanish from the marketplace because the products they identify have been withdrawn or reinvented, notes Kirschenbaum, a veteran trademark and brand management attorney and Senior Counsel in the national law firm’s New York City office. In others, they fade because of mergers and acquisitions. In the column (“Legal Considerations Around the Use of ‘Retired’ Brands”), he describes a variety of scenarios in which such brands could spring back to life, potentially creating challenges, opportunities or a mixture of both for CPG manufacturers, distributors and retailers.

“CPG manufacturers or their competitors could very well seek to leverage retired marks given sufficient incentive to do so,” he writes. “Among many other possibilities, this could involve resurrecting an old brand to capitalize on nostalgia for it among consumers who used it in their youth. Leveraging retired brands also could involve launching an eCommerce website that seeks to capitalize on the goodwill that remains associated with a well-regarded retired brand.”

The key to brand-management in this context, Kirschenbaum writes, is to understand the legal framework in play. In the United States, he notes, trademark rights in a brand are created by use of that brand in the marketplace to identify the source of a good or service. Indeed, U.S. trademark registrations are issued only to marks that are in use in interstate commerce, the attorney explains in the column.

“If a mark ceases to be used, eventually its registration will be cancelled,” Kirschenbaum writes. “In addition, brand owners’ trademark rights generally are limited to the goods or services they offer under the brand name…

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