trademark abandonment

Trademark cancellation proceedings based on abandonment continue to present challenges to trademark registrants.   In the latest case before the US Trademark Trial and Appeal Board, however, the registrant’s trademark registration was spared.

In AD5 Inc. v. Jennifer M. Estes dba #SELFiE T’s, the Petitioner sought to cancel Reg. No. 4642072 of the Registrants #SELFIE design mark (in a reverse mirror image) for a wide variety of apparel items in International Class 25.  Petitioner had alleged that Registrant had abandoned the trademark.  The relevant statute to prove abandonment is Section 45 of the Trademark Act:

Section 45 of the Trademark Act provides that a mark shall be abandoned when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances.

The party seeking cancellation bears the burden of proof to establish abandonment by a preponderance of the evidence.  If the Petitioner can show nonuse of the Registrant’s mark for at least three consecutive years, the burden shifts to the registrant trademark owner to show that it was using the mark or that it had an objective intent to resume use.
Here, although Petitioner alleged that Registrant was not using the mark for at least three consecutive years, the Registrant denied the allegation, citing evidence that she maintained her website for the products bearing the  mark and donated goods to potential marketplace customers.  The Board noted that nonuse of a mark due to lack of demand coupled with on-going marketing efforts may not constitute trademark abandonment.  In the end, Petitioner could not overcome Registrant’s evidence of continued marketplace attempts to sell the items.  This case stands as a reminder that the burden of proof always lies with a petitioner to cancel a trademark registration on abandonment grounds.
In addition to not proving its abandonment claim, the Petitioner was unable to establish its standing to bring the petition for cancellation.  Therefore, the Board’s dismissal of the petition was technically due to lack of standing.  The Board nonetheless proceeded to evaluate the merits of Petitioner’s abandonment claim, stating that Petitioner failed to establish its burden of proof.
Note:  The author was a recent CLE Faculty Member for a training webinar on trademark abandonment sponsored by Strafford, a leading educator of attorneys.