Josh Gerben Tells Fortune What Happens to Discontinued Controversial Trademarks

Following nationwide Black Lives Matter protests in the summer of 2020, many well-known food companies made the decision to discontinue their controversial brands, including Aunt Jemima, Uncle Ben’s, and Eskimo Pies. But what happens to these trademarks after they are discontinued in the marketplace?

Josh Gerben spoke with Fortune about how these brands will discontinue use of their trademarks:

“The business of reviving abandoned brands relies on trademark law’s use-it-or-lose-it structure. An owner of a trademark must actively use the name in order to maintain it. ‘You don’t want people to be able to sit on trademarks and then sue everybody.'”

““If you’re saying a name is racist, are you going to still sell that merchandise and continue to profit from it?”

“Mars has skirted the issue with Uncle Ben’s by renaming the brand Ben’s Original. Experts say it’s unlikely the USPTO would allow for another rice line that includes the name Ben because it would lead to confusion for consumers in the marketplace. ‘It doesn’t really feel like a significant change, but from a trademark standpoint, it’s genius.’”

“PepsiCo has yet to announce an alternative for Aunt Jemima but says that once it does, it will continue using the old brand name on the back of its packaging—a decision that it says will let the company hold ‘on to the trademark, which in turn enables us to appropriately preserve the history.’ Gerben says that legally that could be enough for PepsiCo to maintain the mark, but that the decision signals the company is not serious about its commitment to truly abandoning the brand. ‘From a business standpoint, that’s a really hard place to get to.'”

Source: Kowitt, Beth. “Inside the cottage industry trying to revive Aunt Jemima and other brands with racist roots”. Fortune.com. 08 Dec 2020.