Abandonment

1
Abandonment

• Unlike other forms of intellectual property,
  trademarks have little meaning or use in the
  abstract. They take life only when used in
  connection with a particular product thus, their
  continued legal protection depends upon current
  use

2
Source of Law for Abandonment

• Section 1127 states two means by which a mark may
  be deemed abandoned, even if the registration has
  become incontestable. See 1064-1065
• Nonuse - a TMO can abandon a mark by nonuse and
  the intent not to resume use and
• Loss of significance - a TMO can abandon a mark
  by acting or failing to act which causes a mark
  to become the generic name for goods or services
  or cause the mark to lose its significance

3
Burden of Proof and Abandonment

• Nonuse - The party alleging abandonment carries
  the burden of proof to show
• discontinued use and
• intent not to resume by inference
• intent not to resume use
• failure to use the mark within the reasonably
  foreseeable future (the three year limit)
• On a prima facie showing of abandonment, the
  burden shifts to the TMO to demonstrate an intent
  to resume use or to rebut the presumption of
  abandonment
• reasonable grounds for suspension
• plans to resume use in the reasonably foreseeable
  future

4
Intent to Resume Use

• Intent to resume requires the TMO to establish
  plans to resume commercial use
• Commercial use is a requirement because trademark
  rights derive from use of a mark in commerce and
  not mere registration of the mark
• Warehousing of trademarks is prohibited, thus, a
  TMOs mere intent not to abandon will not satisfy
  the requirement of the TMO to show intent to
  resume
• Use of the mark does not mean the mere
  reservation of a right in the mark. See 1127.

5
Assignment and Licensing

• The universal rule against separation of the
  trade symbol and its goodwill

6
Source of Law for Assignment and Licensing

• Section 1060 provides that
• A registered mark or a mark under application for
  registration may be assigned with part or all of
  the good will of the business that is connected
  with the mark
• Assignments and transfers without good will are
  known as assignments in gross and are invalid
• An assignment must be in writing and it must
  contain the following
• a recitation of the assignment of the mark itself
• a recitation of the goodwill associated with the
  mark

7
Requirements for a Valid Assignment

• The transfer must be of the mark in connection
  with the assignment of the particular business in
  which the business has been used, but goodwill is
  not alone sufficient for a valid assignment
• Indicia of a valid assignment of a mark and
  goodwill are
• continued use of the trademark upon the same
  article or class of articles
• Transfer of tangible assets