An insurance company’s failed attempt to revive the term “Equitable” that it had used for over 150 years underscores the importance of continuously using a trademark and the risks of abandoning a well-established mark even for a short time, attorneys say.
AXA Equitable Life Insurance Co. is appealing a preliminary injunction that a Utah federal court issued Jan. 21 after finding that the insurer abandoned “Equitable” from 2014-2017 during a brief re-brand to AXA. The court temporarily barred AXA from rebranding itself “Equitable,” saying it would cause confusion with the Equitable Life & Casualty Insurance Co.
The case shows how a trademark owner, no matter how well established, relinquishes rights to any trademark it doesn’t use for three years with no indication that it could go back. It also shows the perils of abandoning a longtime brand, even if there’s no immediate plan to revive it.
“I’m honestly surprised that they decided to go forward with this re-brand. There’s almost no way they wouldn’t have known about the Utah company,” trademark attorney Jana Gouchev of Gouchev Law, who advises companies on branding, said of the attempted switch back to Equitable.
Courts can deem a trademark abandoned if a registered owner fails to enforce it against possible infringers or to renew it, so AXA’s failure to do both along with other factors put Equitable National in strong position, Gouchev said.
AXA will have an uphill battle getting the injunction reversed on appeal, barring “some incredible argument” that somehow hadn’t been raised, she said.
AXA at least had an argument that its brand had continued goodwill during the alleged lapse, with evidence including customer statements and Equitable-branded policies, trademark attorney Eric Ball of Fenwick & West LLP said.
But the U.S. District Court for the District of Utah seemed unimpressed by AXA’s argument that it continued to use the mark, and picked apart evidence such as customer statements, Ball said. It found AXA allowing earlier “Equitable” trademarks to expire in 2004 and the lack of new sales or promotions during the lapse decisive.
Some companies have had the foresight to retain rights to brands by finding uses for brands no longer serving as their central identities, in case they want to revive them. Chevron, for ample, has kept several “Standard” gas station open since the U.S. Supreme Court broke up Standard Oil’s monopoly in 1911, Ball noted. Sports leagues sell jerseys of defunct or re-branded teams—like the National Basketball Association’s Seattle SuperSonics, who became the Oklahoma City Thunder—for the same reason, he said.
The court said Equitable Life & Casualty proved AXA’s abandonment under either a “preponderance of the evidence” or a “clear and convincing” standard, but Ball noted that multiple circuit courts are undecided which is correct.
“The line between token use and actual use in commerce has been fought over for decades,” Ball said, adding that what counts as use can sometimes be in the eye of the beholder. “It could be something the Supreme Court to decide if the split widens in any way.”
The case is: Equitable Nat’l Life Ins. Co. v. AXA Equitable Life Ins. Co., D. Utah, No. 2:19-cv-00644, 1/21/20