Articles Tagged with Trademark Abandonment

In this matter, petitioner is seeking to cancel respondent’s trademark registration, FIREBRAND for a newsletter featuring brand and product development pursuant to Section 14(3) of the Trademark Act. See Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015 (TTAB 2018) [precedential]. Petitioner alleges that respondent abandoned the mark. Respondent filed a motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). To withstand a motion to dismiss, the petitioner must allege facts, which if proven would establish that petitioner is entitled to the relief sought. Here, the petitioner needed to show standing to bring the proceeding, and a valid statutory ground to cancel the registration.

The Federal Rules of Civil Procedure apply to Trademark Trial and Appeal Board (“TTAB”) proceedings. The rules require a short and plain statement of the claim showing that the pleader is entitled to relief. The Board follows the Iqbal/Twomblystandard, stating a claim for relief that is plausible on its face. There is no requirement that the Petitioner prove its case at the pleading stage. The Board has applied this standard in three cases, and in all three cases has concluded that no more is required other than pleading nonuse of the trademark, in conjunction with an intent not to resume use.

To further understand this issue one must understand use in commerce as a prerequisite to acquiring trademark registration. There must be commercial use of the type common to a particular industry. This would include test markets, infrequent sales of expensive goods or shipments of a new drug to a clinical investigator while waiting FDA approval. Under trademark law, abandonment is when use is discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. See also, our blog post entitled, How Do You Prove Abandonment Of A Trademark, for more information on this topic. The burden will initially rest with the petitioner to prove a prima facie showing of abandonment. Then the burden shifts to the trademark owner to show the mark was used in commerce or that the owner intended to resume use in the foreseeable future.

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Two weeks ago the Trademark Trial and Appeal Board (the “Board”) issued a precedential decision involving issues of parent and subsidiary trademark use and abandonment. See Noble Home Furnishings, LLC v. Floorco Enterprises, LLC, Cancellation No. 92057394 (April 4, 2016) [precedential]. Noble Home Furnishings, LLC (the “Petitioner”) filed a petition to cancel the word mark NOBLE HOUSE for furniture owned by Floorco Enterprises, LLC (the “Respondent”). The grounds for cancellation were abandonment and fraud. Petitioner’s application was attempting to register the mark NOBLE HOUSE HOME FURNISHINGS for various services including online retail store services featuring furniture and home furnishings. Respondent did not contest Petitioner’s standing in the matter. Petitioner asserted that it filed a trademark application that was rejected on likelihood of confusion grounds due to Respondent’s registration.

The first ground asserted in the petition to cancel was abandonment. To prove this claim before the Board a party must show that there is non-use of the trademark and that there is no intent to resume use. If a plaintiff or petitioner can show three years of consecutive non-use then it has satisfied its burden of proof to show a prima facie case of abandonment. Then, it is up to the registrant or respondent to rebut this presumption by showing use of the trademark or intent to resume use of the mark.

The Respondent filed a Statement of Use on August 18, 2011. The last documented sale under the mark NOBLE HOUSE was on July 14, 2009. Since that date, the Respondent claimed it periodically marketed the products, but there were no further sales. Although, one would think that the period of nonuse would commence after the last sale date, the Board held that the three-year period would start running from the date the Respondent filed its Statement of Use. The rationale for this finding is that an intent-to-use applicant is under no requirement to use its trademark until it files the Statement of Use. To prove use in commerce for goods under Section 45 of the Trademark Act, the mark must be placed on the product and the goods sold or transported in commerce. Typically, there can be no use in commerce unless there is either sales or transportation of the goods even if there is marketing and promotion.

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