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] https://en.wikipedia.org/wiki/Gimbels
[2] https://www.upi.com/Archives/1982/02/22/Giant-conglomerate-sues-country-store-for-trademark-infringement/6222383202000/