Filewrapper® | A patent, trademark, and copyright law blog - Abandonment (trademark)

Eleventh Circuit: Unsolicited proposals insufficient to show intent to resume use of trademark

Mon, 16 Jun 2008 17:24:00-0500

In a decision Friday, the Eleventh Circuit affirmed a district court's grant of summary judgment in favor of the defendant, finding the plaintiff had abandoned its trademarks. Although the complaint consisted of both federal and state common law claims, the analysis ultimately came down to whether a valid Lanham Act claim existed, as the remaining claims were based on the alleged § 1125 claims.

The Eleventh Circuit held the trademarks in question were abandoned due to nonuse, and that mere hope that the company could get funding from an unknown source was not enough to show intent to resume use in the future. As a result, the district court's grant of summary judgment on the issue was proper. The court also held the plaintiff did not have prudential standing to bring a false advertising claim, given the defendant did not sell the allegedly infringing products while the plaintiff was selling products bearing its marks. Because the Lanham Act claims failed, the remaining claims likewise failed, and the district court's grant of summary judgment was affirmed.

More concerning Natural Answers, Inc. v. SmithKline Beecham Corp. after the jump.

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Second Circuit: Famous marks doctrine doesn't support NY unfair competition claim

Wed, 05 Mar 2008 15:39:00-0500

In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition. The Second Circuit certified two questions to the New York Court of Appeals before resolving the issue. With the answers back, the court affirmed the district court grant of summary judgment to the defendants in its entirety.

With the case now fully decided by the Second Circuit, the way is now clear for a possible appeal to the Supreme Court, as this case conflicts with the Ninth Circuit's 2004 decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., which recognized the "famous marks" doctrine rejected by the Second Circuit in this case.

More detail of ITC Ltd. v. Punchgini, Inc. after the jump.

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Second Circuit rejects famous marks doctrine

Fri, 30 Mar 2007 10:50:00-0500

In a recent decision, the Second Circuit held that a trademark holder who has abandoned use of its mark in the United States cannot prevent others from using the mark because the mark is famous in the United States based on use in a foreign country. This concept is referred to as the "famous marks doctrine," and the court held that if it is to be incorporated into United States law, it must be done by legislation, not by judicial decision. As a result, the marks were held abandoned, and the defendants were permitted to use the marks over the original owner's objection, pending resolution of state trademark claims.

More details of the case after the jump.

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