“Where’s The Beef?” Gets Resurrected: Why It’s Important To Maintain Your Trademark Registrations

The "Footloose" remake is on its way to theaters, Duran Duran is on tour, Ghostbusters is getting a sequel, and now, one of the most famous catchphrases ever is making a comeback.  Clearly, the current wave of 1980s nostalgia is not going to die anytime soon.  

The latest example of 80s influence on pop culture is Wendy's recent resurrection of its "Where's The Beef?" campaign, which is among the greatest and most memorable advertising campaigns ever (at least, for those of us who are over 30).  The ads gave their "little old lady" star, Clara Peller, significantly more than her Warhol-alotted 15 minutes of fame.  In the mid-80s, the catchphrase was everywhere — repeated by schoolchildren (including me, at the time) and politicians alike (it was famously used by former Vice President Walter Mondale in his debates with Senator Gary Hart).  For those of you who are too young to remember, you can see the original ad that started it all by visiting Wendy's new website, wheresthebeef.com, where Ms. Peller's famous inquiry lives on.  

In fact, "where's the beef" didn't really start to wane in popularity until the new pop culture phenomenon in advertising arrived in the late 1980s with "I've fallen and I can't get up."  Now, perhaps to take advantage of 80s nostalgia, Wendy's has revived the famous campaign to advertise its new product, Dave's Hot 'N Juicy Cheeseburgers.  This new life for the old campaign serves as a valuable reminder of the importance of maintaining your trademark registrations, even on older trademarks.   

Wendy's trademarked the slogan in 1984, when it began using the phrase to market its products.  Over the years, well after the advertising campaign had ended, Wendy's kept its registration current by filing the necessary renewals and affidavits of continued use.  Presumably, it continued to use the phrase in some way over the years, even as the company moved on to other ads and slogans.  As a result, the company has retained its rights over the trademark and is able to continue using it (and prevent others from doing so) to advertise Wendy's products. 

Your company may, like Wendy's, have older phrases or slogans for which you have (at one time or another) filed for trademark registration.  You may think that you will never want to use those trademarks ever again, and it may be tempting to allow those registrations to lapse.  But before you do so, it's worth considering the example set by Wendy's and other companies — there is value in nostalgia, and sometimes what's old becomes new again, even in advertising. 

Consider, for example, other companies that have revived old  slogans or logos, like soda companies, NFL teams, hotel chains, and the like.  These companies demonstrate that it is worth your time and resources to maintain your registrations on older marks.  As a result, it's important to have a good scheduling or calendaring system to ensure that you are aware of key dates for your marks and can prevent them from lapsing. 

3 comments

  1. Matt,
    Nice posting, and good seque into franchise law. It reminded me that not everything from the 80s should be revived (although Elvis Costello is still going strong I haven’t missed Duran Duran in the meantime – and I can’t imagine the appeal of a Footloose remake).
    I couldn’t resist checking on your assumption that Wendy’s has “continued to use the phrase in some way over the years,” so I looked at the PTO website and BK’s January 2006 renewal application. The specimen of continued use is a newspaper ad with a 2005 copyright date. Cynically, I suspect they published it once in order to use it in their renewal.
    Keep up the good work,
    Bruce

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  2. Thanks for the comment, Bruce. I don’t blame you for being a bit cynical regarding Wendy’s specimen of use (truth be told, I am too). But your comment does highlight an important point: to keep your registration current, you need to continue using the mark in commerce at some level.

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  3. Your article answers my question of whether a phrase not including a company name can be trademarked. I am wondering though if it can only be done by a company or also by an individual. If yes then how to market the rights to a company in the appropriate business. Thank you.

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