Thanks to John Welch for pointing me to a new decision from the TTAB, Chrysler LLC v. Pimpo. Chrysler LLC opposed the registration of the mark RAMBLER for “automobiles and structural parts therefor” by Anthony S. Pimpo. RAMBLER is, of course, a model of car that was produced from 1950 to 1969 – you may be familiar with an earlier trademark dispute over the RAMBLER name, American Motors Corp. v. Action-Age, Inc., 179 U.S.P.Q. 377 (TTAB 1973).
Mr. Pimpo originally filed the application for “automobiles and automobile associated goods; parts and memorabilia pertaining to this specific brand.” Mr. Pimpo had also filed applications for ASPEN and STINGRAY, also well-known car brands, so it’s pretty clear that Mr. Pimpo was referring to the original RAMBLER automobile in his application.
The TTAB held that the RAMBLER mark was abandoned for automobiles, but that Chrysler successfully established trademark rights in RAMBLER for some collateral goods earlier than the filing date of Mr. Pimpo’s application. Saving a discussion of the merits for another day, the case is interesting in its description of the licensing of the RAMBLER brand for these collateral goods. I previously blogged on River West Brands, a company that identifies unused marks with residual goodwill and builds a new business around them. Chrysler has a somewhat different approach; a company called the Joester-Loria Group is a licensing agency that acts on behalf of Chrysler to license the “heritage” RAMBLER mark. As described by the president and chief executive officer of the agency during her deposition:
We develop and execute licensing strategies for our clients, so we will start with strategic planning for their marks and execute those programs, including negotiating terms of agreements, developing the contracts, reviewing product for quality control and appropriateness, and managing the retail distribution and revenue collection.
One of the most important trends of the last several years has certainly been the return of retro or heritage intellectual property . . . . [A heritage mark] is a mark that existed sometime 20, 30 years ago, had built an affinity and emotional connection with the consumer as a result of the original product that was in the marketplace, and continues to have nostalgia appeal with consumers who are still interested in acquiring product that is built around the mark’s core values and replicates the markets and the mark itself.
What’s right or wrong here? How many of the licensees are simply paying a toll to avoid the uncertainty of suit (or signed up under threat of suit)? Is Chrysler entitled to the financial benefit of the residual goodwill in the mark? If not Chrysler, then who, or no one?
4 responses to ““Heritage” Brands Revisited”
Pamela,
In January 2010, Chrysler LLC was disputing the ownership of the AMC name and its distinctive “A” logo. Apparently, a gentleman named Anthony Plimpo had registered it after it had been abandoned in 2005. The courts ruled in Plimpo’s favor, as I understand the case.
But in December 2010, Chrysler registered the AMC name and logo. How can they do that? Do you know what happened in this case to allow Chrysler to be able to re-register a lapsed trademark?
I’m a classic car fan who is interested in the issue of abandoned trademarks. That’s how I found your post on the issue about the Rambler trademark.
Just wondering if you have an opinion about this.
—–Todd Ruel
Sorry, Pamela.
I got some facts wrong about my earlier comment. His name wasn’t Plimpo, and he wasn’t involved in the Chrysler/AMC trademark dispute. (Pimpo is the guy involved in the Rambler mark dispute.)
Instead, here’s a link to some information about the case: http://www.floridapatentlawyerblog.com/2010/01/daimlerchrysler-suffers-setbac.html
So….do you have an opinion about how Chrysler is able to register the AMC trademark when it had apparently lapsed?
Todd,
I found two Chrysler registrations, for T-shirts and die-cast car models. The latter was registered a few days ago. http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78661023.
The decision in the Florida Patent Lawyer Blog wasn’t the end of the case but only decided one issue, fraud. After that, the faux AMC company ultimately defaulted and its registration was cancelled in June, 2010. http://ttabvue.uspto.gov/ttabvue/v?qs=78052364
With this registration of the way, Chrysler’s registration for the die-cast models was ultimately allowed.
Hope that’s helpful,
Pam
Pamela,
Thanks for filling in the blanks. You have access to info about subsequent events that I don’t.
In the interest of full disclosure, I run a web site devoted to orphan cars and brands like American Motors. I’m a small solopreneur who is frustrated when companies like Chrysler, whom I helped to bail out, allow their trademarks to lapse. Then they come swooping back in a few years later to reclaim them. Then they spend all this money policing the trademarks and shutting down guys like me who would like to help fans to celebrate their heritage brands.
Yes, I know I could just go out and get license for those brand names, but the cost of that license is onerous! Instead of spending all that effort to protect and defend, I wish they could be creative and find ways to enable. Maybe find ways to micro-license. It would be a win-win, and they could develop so many profitable partnerships.
If there’s at least a little money to be made from a dead brand, wouldn’t you think Chrysler would be better off harvesting that cash rather than damming the flow of it? They’re lucky to own something that has residual good will after all these years. After all, you don’t hear about too many people getting together for vintage refrigerator conventions.
I know you’re an IP lawyer, and my licensing rant is off topic. Thanks for giving me a soapbox for just one minute.
I love your blog and how accessible your writing is, especially to non-legal people like me. I like reading about how people decide the ways in which we’re all going to live together, and your analysis keeps it simple.
Keep it coming! —-Todd Ruel
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