Proving Abandonment: How Trademark Rights Can Be Lost Through Non-Use
Section 45 of the Lanham Act states a trademark is considered abandoned when “its use has been discontinued with intent not to resume such use.” Abandonment may be inferred from the surrounding circumstances, but proof of nonuse for three consecutive years is prima facie evidence of abandonment. Since use of a mark must be bona fide and registration cannot be used to reserve rights in a mark (apart from intent to use applications), a challenger seeking to cancel a registration on the basis of abandonment must either provide evidence of three consecutive years of nonuse or prove (1) the respondent discontinued use, and (2) the respondent intended not to resume use.
In Ross Bicycles LLC v. Century Sports, Inc., Cancellation No. 92067406, 2020 TTAB LEXIS 128 (T.T.A.B. Mar. 27, 2020), the challenger filed a petition to cancel the mark ROSS for “bicycles and structural parts thereof.” There were many evidentiary objections, and ultimately, the TTAB’s decision was based merely on oral testimony and one screenshot from a website selling a bike with the ROSS mark. The TTAB concluded that the reliable oral testimony presented by the challenger established a prima facie case of abandonment because the mark was shown to not have been used in commerce during the period of at least July 2013 through November 2017, which corresponded to the time period between when the trademark owner acquired the mark and when the petition for cancellation was filed. Additionally, there was no evidence that the owner intended to resume use of the mark. The Board, therefore, granted the cancellation petition and cancelled the registration on the basis of abandonment.
In contrast, the TTAB declined to find abandonment in My Organic Zone v. Shawgo, Cancellation No. 92068377, 2020 TTAB LEXIS 123 (T.T.A.B. Apr. 10, 2020). There, the Respondents owned a registration for the mark “Organic Zone” for online retail store services and café-restaurants featuring both food and clothing. The Petitioner filed a petition to cancel on the grounds of abandonment, arguing the mark was not used in commerce for at least three years, since April 2015. The TTAB found that the evidence did not establish any period of nonuse, and therefore, the mark was not abandoned. The evidence on which the TTAB based its decision was the Respondents’ interrogatory responses, which showed the registered mark was still in use in commerce and had not been discontinued for any period. The trademark owner came forward with specific information regarding prior and current use of the mark, as well as showed product offerings that used the mark.
Most recently, the TTAB considered abandonment of the CHICLETS trademark in Retrobrands USA LLC v. Intercontinental Great Brands LLC, Cancellation No. 92066647, 2020 TTAB LEXIS 239 (T.T.A.B. May 29, 2020). Retrobrands filed a petition for the cancellation of the Chiclets trademark registrations on the grounds of abandonment, arguing that the marks had not been used in the United States for a period of at least three years. Retrobrands is in the business of relaunching formerly famous, now abandoned brands, and it filed an application for registration of the mark CHICLETS for chewing gum; this gave Retrobrands standing to petition for cancellation of the mark.
Since 1900, Chiclets branded gum has been sold in the United States; various companies have acquired the Chiclets brand over the years, and most recently in 2011, it was acquired by Mondelēz, of which the Respondent is a part. It was undisputed that Mondelēz North America sold Chiclets branded gum through March 2016, when it decided to discontinue sales of Chiclets in the United States; the Respondent presented evidence that sales continued through the end of 2016. During 2016 and 2017, Mondelēz Exports, another division of the Mondelēz family considered whether to continue sales of Chiclets branded gum. Petitioner filed the petition for cancellation on August 9, 2017. Mondelēz Exports began distributing Chiclets gum in the United States by April 2018, after entering into an agreement with a distributor to import and sell the products. Evidence of sales since 2018 led the TTAB to conclude that the sales were not “token” sales. Based on these facts, the TTAB found that the Petitioner did not establish three years of nonuse, and therefore, did not establish prima facie abandonment. Nevertheless, because there was a period of nonuse from approximately January 2017 through April 2018, the Petitioner could still show abandonment if it could prove that the Respondent intended not to resume use of the mark.
In an effort to meet its burden, the Petitioner presented evidence that the Respondent had not done any advertising or marketing to promote the product since 2015. The TTAB found this evidence showed that only one member of the Mondelēz family decided to discontinue selling Chiclets branded gum, not that the entire family of companies intended not to resume use. The Petitioner also showed product lists and customer service emails showing the Chiclets branded gum had been “discontinued.” The TTAB again found this evidence was limited to Mondelēz North America, not the entire family of companies. The TTAB concluded that the Petitioner did not meet the burden of establishing that the Respondent did not intend to resume use of the mark; therefore, the registration was presumed valid. The TTAB considered the Respondent’s evidence, even though it did not have to, and found that there was an intent to use the mark based on the fact that another member of the Mondelēz family considered taking over the Chiclets branded gum by at least January 2017, and ultimately began distributing the product again in April 2018.
These cases illustrate that a prima facie case of abandonment is easily establish upon a showing that a mark was not in use in commerce for at least three years. If such evidence of consecutive non-use is unavailable, it becomes much more difficult to prove abandonment. To carry its burden, a challenger must show not only that the trademark owner discontinued use of the mark, but also that the respondent intends not to resume use of the mark.