New York Trademark Attorney Blog
In this matter, petitioner is seeking to cancel respondent’s trademark registration, FIREBRAND for a newsletter featuring brand and product development pursuant to Section 14(3) of the Trademark Act. See Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015 (TTAB 2018) [precedential]. Petitioner alleges that respondent abandoned the mark. Respondent filed a motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). To withstand a motion to dismiss, the petitioner must allege facts, which if proven would establish that petitioner is entitled to the relief sought. Here, the petitioner needed to show standing to bring the proceeding, and a valid statutory ground to cancel the registration.
The Federal Rules of Civil Procedure apply to Trademark Trial and Appeal Board (“TTAB”) proceedings. The rules require a short and plain statement of the claim showing that the pleader is entitled to relief. The Board follows the Iqbal/Twomblystandard, stating a claim for relief that is plausible on its face. There is no requirement that the Petitioner prove its case at the pleading stage. The Board has applied this standard in three cases, and in all three cases has concluded that no more is required other than pleading nonuse of the trademark, in conjunction with an intent not to resume use.
To further understand this issue one must understand use in commerce as a prerequisite to acquiring trademark registration. There must be commercial use of the type common to a particular industry. This would include test markets, infrequent sales of expensive goods or shipments of a new drug to a clinical investigator while waiting FDA approval. Under trademark law, abandonment is when use is discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. See also, our blog post entitled, How Do You Prove Abandonment Of A Trademark, for more information on this topic. The burden will initially rest with the petitioner to prove a prima facie showing of abandonment. Then the burden shifts to the trademark owner to show the mark was used in commerce or that the owner intended to resume use in the foreseeable future.
Nonuse of a trademark for three years is prima facie evidence of abandonment. A registrant may rebut a prima facie case of nonuse. See the matter, Christian M. Ziebarth v. Del Taco, LLC, Cancellation No. 92053501 (March 31, 2015) [not precedential], where the petitioner successfully proved a prima facie case of abandonment for a mark used for restaurant services, and the respondent could not rebut the presumption. Use of the mark in that case ceased in 1995, and did not resume until 2003. The use in 2003 could not cure the abandonment of the mark. Once a mark is legally abandoned it goes back into the public domain.
The Board stated that the same pleading standard for abandonment claims has been in effect since 1989. The registrant argued that allowing this minimal standard to continue for Board proceedings, will encourage parties to file unwarranted abandonment claims. The Board did not agree, and stated that they were not concerned with an increase in abandonment claims. Assuming arguendo that unwarranted petitions were filed, the Board could take measures to discourage the filings. Such measures could include mandatory discovery conferences and imposing sanctions.
In the end, the Board concluded that the petitioner’s allegations in the pleading that, “on information and belief, Respondent is not using Respondent’s Mark on or in connection with Respondent’s Goods and Services with no intent to resume such use” were sufficient to support an abandonment claim. The Board further stated that the allegations of nonuse, plus intent not to resume use serve both to describe the claim and to describe the necessary facts to support the claim. If you have questions concerning trademark abandonment or other trademark related inquiries, please contact the firm for a courtesy consultation.