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Abandonment

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Abandonment. Unlike other forms of intellectual property, trademarks have little ... Indicia of a valid assignment of a mark and goodwill are: ... – PowerPoint PPT presentation

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Title: 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
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