Written by Mark Terry
What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors.
The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment. The Imperial Tobacco Federal Circuit case stands for the holding that the trademark owner may rebut the presumption of abandonment arising from its non-use by presenting evidence showing that its non-use during that period was excusable, or evidence showing that, during the period of non-use, it maintained an intent to resume use of the mark. So what constitutes intent to resume and what constitutes an excuse?
court in Imperial Tobacco set a high bar for proving
intent to resume use. Even though the party claiming trademark rights took
steps each year from 1981-1987 – the period of non-use – towards introduction
of the cigarette brand bearing the mark, the court held this was not enough to
prove intent to resume use. Specifically, the following activity was found to
be inadequate: 1) developing a marketing strategy for the products bearing the
mark, 2) seeking registration of the mark for the goods in question, and
3) making efforts to license the mark.
in another case the registrant was found not to have the intent to resume use
even though he took the following steps during the non-use period: 1) making
trips abroad in an effort to establish stores under the mark 2) meeting with
real estate agents and 3) visiting possible sites for the stores and examining
stores of competitors. Richard v. Linville, 133
F.3d 1446 (Fed. Cir. 1998).
only acceptable excuse outlined explicitly in the Imperial
Tobacco case was the pending resolution of trademark
litigation, see, e.g., La Societe Anonyme des Parfums Le Galion v. Jean
Patou, Inc., 495 F.2d 1265, 1274, 181 USPQ 545, 550 (2nd
Cir.1974); New England Duplicating Co. v. Mendes, 190 F.2d
415, 418, 90 USPQ 151, 153 (1st Cir.1951). But the court in Imperial
Tobacco did not agree that pending litigation was the cause of
the non-use in that case.
conclusion, the bar is pretty high when attempting to rebut a presumption of
abandonment of a trademark due to non-use. A successful rebuttal requires a
substantial factual showing of a concrete and uninterrupted series of actions
to get the mark in use in commerce during the entire period of non-use.