Virgin America is Dead, Long Live Virgin America’s Marks

Apr 10, 2017

[Note: The last paragraph of this post was revised slightly on 4/13/2017, including adding the footnote.]

Virgin America LogoA lot happened in 2016. The first thing that comes to my mind as the unexpected event of 2016 is Alaska Airlines’ acquisition of Virgin America. At first glance, Alaska and Virgin didn’t seem to  have that much in common. Alaska is the introvert: it’s a well-established airline that likes to stay close to home on the West Coast. Virgin is the fun, upstart newcomer that likes to explore new places around the country. With the acquisition, Alaska will now be able to tap into Virgin’s loyal customer base all throughout the United States.

Although Alaska completed its acquisition of Virgin in December 2016, there were no immediate, significant changes to either of the airlines. However, last week, Alaska Airlines announced that it intended to retire the Virgin America name and logo in 2019. Presumably, the entirety of the Virgin America brand – color schemes, uniforms, in-flight entertainment, frequent flyer program, and everything else, will be phased out as well. Alaska intends to implement new flight attendant uniforms and a redesigned cabin interior would be introduced to all its flights in the next few years.

What’s going to happen to Virgin America’s registered trademarks and servicemarks? Under federal law, a mark is deemed to be abandoned if its use has been discontinued (generally for at least 3 consecutive years) and there is intent not to resume its use. The owner of an abandoned mark won’t be able to protect against use of the mark by others. This means that third parties can use the mark, or even register the mark for themselves.

In Virgin America’s case, Alaska has already publicly expressed its intention to retire the Virgin America name and logo. While the term “retirement” may be thrown around loosely by some (see e.g. Jay-Z, Barbara Streisand and Michael Jordan), in this context, it seems synonymous with abandonment. Alaska’s announcement suggests that it will discontinue all use of the Virgin America marks by 2019 as part of its comprehensive rebranding process. If the Virgin America marks are deemed “abandoned,” it opens up the possibility for other parties (or Virgin America’s founder, Sir Richard Branson) to use and register the Virgin America marks – or maybe even start a new Virgin America airline.¹ While Virgin America, the company, may no longer be around, its marks may live on.


¹ Although third-party use of an abandoned “Virgin America” mark could infringe upon other Virgin marks still owned by Branson or his holding company, Branson himself could potentially revive the Virgin America brand, depending on the terms of the Alaska/Virgin buyout agreement.


Modern Hieroglyphs: Intellectual Property Signs of the Times

Jun 04, 2015

You see them every day; those funny-looking characters and symbols splashed all over goods and advertisements.  Ⓡ.  Ⓒ.  Our friends “TM” and “SM” and even Ⓟ.  Like modern hieroglyphs, we know that these symbols have some cryptic meaning or purpose, but what do they really mean and why use them?

CartoucheAll of these symbols function as sign-posts to signal to the world that somebody has or is claiming intellectual property rights.

The Ⓡ symbol tells the viewer that he or she is face to face with someone’s registered trademark under federal law.  It puts that person on notice—take heed that someone has important and protectable rights in this particular name or mark.  15 U.S.C.A. § 1111 (a registrant of a trademark with the United States Patent and Trademark Office may give notice that a trademark is registered by displaying with the mark the words “Registered in U. S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, Ⓡ).  Absent such notice, the owner’s ability to recover damages for infringement by others is limited under federal law unless the owner can show that the infringer had actual notice of the trademark registration.  Never use the Ⓡ symbol for an unregistered trademark, however.  Improper use of a registration notice with an unregistered trademark, if done with the intent to deceive, is a ground for denying the registration of an otherwise valid mark.  Copelands’ Enterprises, Inc. v. CNV, Inc. (Fed. Cir. 1991) 945 F.2d 1563, 1566.  It may also be found to be an affirmative misrepresentation raising the spectre of civil or criminal liability.

Where a trademark is not registered, those claiming a protectable trademark or servicemark can make use of the “TM” and “SM” symbols.   The former signals a claimed trademark, while the latter is used with servicemarks (a servicemark is a trademark used to identify a service rather than a product).  No specific federal statutes authorize the use of the “TM” symbol, limits its use, or states definitively what it does or does not convey to the public.  Southern Snow Manufacturing Co. v. Snow Wizard Holdings, Inc. (E.D. La. 2011) 829 F.Supp.2d 437, 452 (“Southern Snow”).  Historically, however, the designation has been used as a way of alerting the public to a claim of ownership of a trademark.  Southern Snow, at p. 452.  Such a claim does not necessarily equate with any actual, protectable rights.  “…[T]he TM symbol does not mean that the party has trademark rights in the name or can ensure that the mark is capable of serving as a trademark…”  Southern Snow, at p. 453-454.

However, using the “TM” and “SM” symbols can help establish a trademark.  The courts may consider such use as evidence demonstrating that a name or mark is being used in the sense of a trademark or servicemark to reflect the origin of the goods or services, a factor in the overall determination of the existence of trademark protection.  The fact that no symbol is used to designate an alleged trademark is evidence that the mark is not being used as a trademark.  T.A.D. Avanti, Inc. v. Phone-Mate, Inc. (C.D. Cal. 1978) 1978 WL 21444, *6.

Use of the copyright related symbols Ⓒ and Ⓟ, can be a bit more complicated.  For works first published after March 1, 1989, a formal copyright notice is optional.  17 U.S.C.A. § 401(a).  There are several formats for this notice proscribed by federal statute.  Federal law specifies that the notice may be in any one of the following forms:  (1) the symbol Ⓒ (the letter C in a circle), (2) the word “Copyright” or (3) the abbreviation “Copr.”  17 U.S.C.A. § 401(b)(1).  For sound recordings, a different form of notice is used—the symbol Ⓟ (the letter P in a circle) along with the year of first publication and the designation of the owner.  17 U.S.C.A. § 402(b).  While not required, including a copyright notice on a published work can negate an infringer’s ability to rely on the “innocent infringement” defense to avoid the imposition of certain damages.  17 U.S.C.A. §§ 401(d) and 402(d).

A copyright notice was required for works published before March 1, 1989 (the effective date, as to the United States, of the international copyright treaty known as the Berne Convention).  General publication before that date without a copyright notice could cause a work to enter the public domain if the copyright owner failed to cure the omission of the mandatory copyright notice.  There are, however, some limited circumstances in which the omission of the copyright notice from authorized copies distributed by the copyright owner does not invalidate the copyright in a work.  For example, a copyright is not lost if an otherwise required copyright notice was left off in violation of an express written requirement contained in the owner’s authorization of the public distribution of the work.  17 U.S.C.A. § 405(a)(3).

Unless you are adept at reading hieroglyphs, consulting with a trademark attorney before making use of any of these symbols in corporate logos, advertisements or other communications is a must.