A question that comes up with some regularity in our practice goes something like this; “So-and-so has stopped using their trademark, can I file a registration application for, and use, that same mark now?”
A well settled point of trademark law is that a mark must be used in commerce to be maintained, or else it is abandoned. (Read more about trademark abandonment in our post here). And a gap of three years or more of not using a trademark in the United States will create a presumption that the mark has been abandoned. But the clarity ends there, because in the U.S., the issue turns not always on time, but on “intent.” If a trademark owner “intends” to stop using a mark, the time becomes irrelevant, and the mark would be immediately considered abandoned. But what if the use of a mark simply ceases, at least for a while, and the mark owner, either actively or passively, suggests that they intend to resume the use of the mark.
An interesting case on this issue is slowly winding its way through the United States District Court for the Northern District of California. Macy’s Inc. v. Strategic Marks LLC, 3:11-cv-06198 (N.D. Cal.). Read Motion for Summary Judgment. Began in 2011, the case has a complex procedural history. But stripped of this, it raises difficult questions as to “How long is long enough?” for abandonment.
Over the course of years and its expansion, Macy’s bought many great old department stores and the brands associated with them – names like The Broadway, Bon Marche, and Abraham & Strauss. Macy’s styles these its “Heritage Brands.” The Defendant, arguing that Macy’s had ceased suing these “heritage brands” filed intent-to-use trademark applications, and later, statements of use based on depictions of the marks on its website. Macy’s has charged that the registrations are invalid for failure to show proper use in commerce for online retail store services.
So on one level the case seems about Strategic Mark’ actual use status. But what about abandonment? If Macy’s never abandoned the marks, as they argue, then the marks were never eligible for re-registration, and the propriety of Strategic Mark’s use is never reached. Macy’s argues that it retained a “residual goodwill” in the Heritage Brands, “even if it if it had abandoned the Heritage Brands at some point in the 1990s or early 2000s (which it did not).” (Recall the TTAB’s disapproval of the “residual goodwill” argument in the Del Taco case.)
Will the court stick to the narrower facts of actual use documentation? Or give us more definitive guidelines on abandonment? For now, the subject remains clouded; for while abandonment maybe presumed after three years of non-use, it can occur well before that, depending on the often-impossible to discern “intent” of the mark owner.