Trademark and Unfair Comp.

1
Trademark and Unfair Comp.

• Boston College Law School
• October 14, 2004
• Abandonment

2
Abandonment

• Lanham Act 45 (15 U.S.C. 1125)
• Abandonment. A mark shall be deemed to be
  abandoned when either of the following occurs
• (1) When its use has been discontinued with
  intent not to resume such use. Intent not to
  reuse may be inferred from circumstances. Nonuse
  for three consecutive years shall be prima facie
  evidence of abandonment. . . .
• (2) When any course of conduct of the owner,
  including acts of omission as well as commission,
  causes the mark to become the generic name for
  the goods or otherwise to lose its significance
  as a mark.

3
Abandonment

• Types of abandonment
• Non-Use
• Assignment in Gross
• Naked Licensing
• Failure to Police

4
Silverman v. CBS870 F.2d 40 (2d Cir. 1989)
5
Trademark / Source Nexus
Strong
Weak
None
Generic (E.g. aspirin)
Arbitrary (E.g. NIKE)
Descriptive (E.g. ALL BRAN)
Source (E.g. Kellogg, Inc.)
Source (E.g. Bayer, Inc.)
Source (E.g. Nike, Inc.)
6
Abandonment
Nonuse
7
Sports Teams
8
Abandonment
Assignment in Gross
Trademark (HEARTLAND)
Trademark (HEARTLAND)
?
?
Source (Clark Freeman Corp.)
Source (Sears, Inc.)
9
Abandonment
Naked Licensing
Trademark (DA VINCI)
Trademark (DA VINCI)
Licensee (Renaissance)
?
Source (Barcamerica)
Source (Barcamerica)
10
Abandonment
Failure to Police
11
Administrative Details

• Next Assignment
• VI.A.1 - Likelihood of Confusion Basic Factors