Suzanna M. M. Morales

On January 17, 2017, Feld Entertainment, the parent company of Ringling Bros. and Barnum & Bailey, announced that it is closing down the circus. According to a press release, the last performance of the Ringling Bros. circus will be May 7, 2017. Feld will continue to offer other shows such as Disney on Ice and Marvel Universe LIVE!.

Since its inception in 1871 under a different name, the Ringling Bros. and Barnum & Bailey Circus built up a valuable brand. Generations of circus goers (this author included) cherish childhood memories of lion tamers, tightrope walkers, and other death-defying feats, all orchestrated by a ringmaster in a top-hat and tails.

So what happens to the brand? In a situation like this, where the brand owner (or at least the parent company) remains in business, can it keep others from exploiting the goodwill in its trademarks once use ceases?

Under United States trademark law, trademark rights are tied to use of the mark for particular goods or services. The trademark owner can keep others from using a confusingly similar mark for the same or related goods and services. But the owner also can lose its ability to enforce its rights by abandoning its mark. While the law seeks to prevent consumer confusion, it also discourages brand owners from continuing to “warehouse” their trademarks long after use has been discontinued.

According to the Lanham Act trademark statute, a trademark is abandoned when use is discontinued without intent to resume. 15 U.S.C. § 1127. Three years of non-use is considered presumptive evidence of abandonment, though courts and the Trademark Office will look to other circumstances as well. Here, Feld unequivocally announced its intention to close down the big top. On its face, that seems like abandonment without intent to resume, particularly where resuming use would seem to be a Jumbo undertaking in light of everything entailed in bringing the circus back together.

Ringling Bros.-Barnum & Bailey Circus Combined Shows, Inc. owns around forty active federal trademark registrations. Several of these registrations incorporate RINGLING BROS. or RINGLING BROS. AND BARNUM & BAILEY for use in conjunction with not just entertainment services, but also clothing, plush toys, and scientific study and research regarding elephants. The company also owns registrations for THE GREATEST SHOW ON EARTH in standard characters (word only) and stylized forms for entertainment services as well as merchandise and programs.

Through the years, Ringling has been vigilant in enforcing its trademark rights, including bringing twenty-one oppositions to pending applications and requests for cancellation of registrations before the U.S. Patent and Trademark Office since 1970, as well federal lawsuits for trademark infringement.

It will be several years before some of Ringling’s registrations are due for their next renewal, when Ringling must provide examples of use to the U.S. Patent and Trademark Office or the registrations will be cancelled.

Even for a mark no longer in use for its core goods or services, some courts have held that the owner can maintain “residual rights” in a mark. The theory is that consumers may continue to associate lingering goodwill with the mark even after use is discontinued. But this “residual” goodwill fades over time. Also, in order to maintain a U.S. Federal trademark registration, the owner must periodically demonstrate use of its mark. Such use must be “actual use,” which means that it is more than token use merely to reserve rights in its mark.

Another option to maintain some trademark rights could be to continue selling collateral goods, such as t-shirts. Again, the brand owner’s rights in its mark are tied to use for particular goods or services, so it must prove that an accused infringer’s mark is confusingly similar to the mark for the goods and services for which the owner’s mark is used. In this example, if an unrelated company started a “Ringling” circus, Ringling (or Feld) would need to demonstrate that consumers would be likely to confuse the use of the imitator’s “Ringling” circus with genuine Ringling-branded t-shirts, or any residual rights in the brand related to its entertainment services. (A court also would consider whether the other party exercised bad faith in adopting a knock-off brand to trade on Ringling’s remaining goodwill.)

As in the hypothetical above of a new “Ringling” circus, some new owners have even found a business model in reviving the dead brands of others. For example, POLAROID, SHARPER IMAGE, and NUPRIN all were brought back after the prior owners discontinued the use of the marks.

A company should exercise caution in public statements about the future of its brands, especially if there is a possibility of reviving the trademark use. The time and expense of maintaining some actual use and enforcement of a trademark may be prohibitive, especially for a failing brand. All of these considerations should be explored before a decision to abandon a trademark is made.