Cognate's Trademark Blog

Trademark Risks, Colonel Sanders, The Hamburglar, and Shake Shack

The media is calling it a “nostalgia craze.”  A trademark lawyer could call it residual goodwill.  KFC and the Colonel.  McDonald’s and the Hamburglar.  Meanwhile, reports this week have Shake Shack looking at a chicken brand. Every marketing change carries risks. How about legally? Is there any risk in going back to the future?

Companies regularly move away from one mark and marketing campaign to a new one.  It goes like this: Company A used the mark for 14 years.  A long time.  They spend millions in advertising and promotion.  But time moves on and competition never stands still.  Time for a fresh approach.  Suppose that five years after Company A closes, Company B comes up with its own idea. Company B has no desire to copy Company A. But the new name it wants to use is really close.  Company B will wonder: “Can we use this name?”

The law says you can presume that after a three year lapse in use, the first user has abandoned its rights.  But that presumption is easy to beat, so it usually does not get you too far when Company A’s mark is known nationwide.  The legal analysis is usually very murky.  The question is: “When does the public stop associating this mark with Company A?”

The Hamburglar does not seem to have been the subject of numerous trademark registrations.  One of them, for restaurant services, expires in June, subject to renewal.  For McDonalds, the Hamburglar was probably a supporting cast member at best.  Is the Hamburglar appealing to today’s little kids, or to their parents?  Considering that most little kids don’t walk into McDonalds with cash or debit cards, it is probably fair to conclude that the purchasers are parents.  If the parents remember the Hamburglar, then rights in the trademark haven’t lapsed.  This is a bit of an oversimplification, but generally, this is how it works.  And again, this is not a perfect example because — whether or not still used — “Hamburglar” is still registered to McDonalds.
With The Colonel it is probably the same conclusion, but a slightly different story.  Once upon a time, when KFC was known as Kentucky Fried Chicken, it was all about Colonel Sanders.  The Colonel was everywhere — on every bucket of chicken, on every sign, on every napkin and in every commercial.  Then, The Colonel was demoted.  Trademarks like “Colonel Sanders Recipe” went by the wayside, and even the drawing of The Colonel himself let there be no doubt, the Trademark Office records say:  “The mark is a representation of an actual person, namely, Harland Sanders, whose consent is of record.”


Bringing back a mark which the media today is calling “nostalgic” has its risks, but a mark in which there has been great investment does not easily go away. Leveraging a brand has great value.

Now, turn away from icons of the past to possible fast food empires of the future. One of the hottest names in fast food this year has been Shake Shack. Having a foothold in burgers and shakes, they seem to be trying to leverage their “Shack” mark to expand to things like “Chicken Shack.”  The media is reporting that “Chicken Shack” is the subject of a new trademark application because they want to expand into chicken restaurants.  (The application is for chicken sandwiches, not restaurants, but what do I know?)  Some media reports also say that there seem to be lots of “chicken shacks” around.  But, again, it may be worth the risk to SSE, the company which owns the Shake Shack intellectual property, because of the huge investment and cachet that is “Shake Shack” this year.

Building on a tried and true, or even historically iconic brand, holds great promise. But it is not without risk.
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