“Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. 15 U.S.C. § 1127. Use of a mark may be shown by a trademark license because the use of a licensed mark by the licensee inures to the benefit of the licensor. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1035 (TTAB 2017) (“It is well-settled that use of a mark by a licensee inures to the benefit of the trademark owner.”); Quality Candy Shoppes/Buddy Squirrel of Wisc., Inc. v. Grande Foods, 90 USPQ2d 1389, 1392 (TTAB 2007) (“A basic principle underpinning trademark law in the United States is use of a mark in commerce; and years of precedent make it very clear that proper use of a mark by a trademark owner's licensee or related company constitutes ‘use' of that mark attributable to the trademark owner.”).

Evidence of three consecutive years of nonuse of a mark, however, can be prima facie evidence of “abandonment” which creates a rebuttable presumption that the registrant has abandoned the mark without intent to resume use. 15 U.S.C. § 1127; Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990). A convincing demonstration of “excusable non-use” can negate any intent not to resume use of the mark.

OLD SCHOOL Cancellation

In Vans, Inc. v, Branded, LLC, 2022 USPQ2d 742 (TTAB Aug. 11, 2022), Vans sought cancellation of Branded's OLD SCHOOL trademark registrations based on nonuse with no intent to resume use.

Prima Facie Abandonment

Branded acquired the OLD SCHOOL registrations in a bankruptcy liquidation auction in 2008. Since then, the Trademark Trial and Appeal Board (“TTAB”) found there was no “credible documentation” showing use of the mark OLD SCHOOL to identify clothing or sales of OLD SCHOOL clothing that would support the inconsistent testimony presented by Branded about alleged use. See Bass Pro Trademarks, LLC v. Sportsman's Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008) (respondent's testimony regarding its first use was not clear and convincing but rather was vague and undocumented); Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857, 121 USPQ2d 1357, 1362 (6th Cir. 2017) (absence of objective evidence of plans to use the mark on certain goods and services proved the lack of a bona fide intent to use). In addition, evidence of secondhand sales of previous OLD SCHOOL clothing on third-party websites also did not show actual use.

Naked Licensing Attempts Not Enough to Resume Use

In the face of a prima facie showing of abandonment, a respondent must put forth evidence with respect to either specific activities undertaken during the period of nonuse, or special circumstances which excuse nonuse, in order to establish intent to commence or resume use. See On-Line Careline, Inc. v. Am. Online, 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); Cerveceria India Inc. v. Cerveceria Centroamerica, S.A., 10 USPQ2d 1064, 1068 (TTAB 1989), aff'd, 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).

Branded attempted to show that it intended to license the OLD SCHOOL mark, but had not received any offer that has “knocked [his] socks off,” or a “no-brainer” offer such as a $100 million offer.

Not a Warehouse for Unused Marks

The TTAB noted that “the Trademark Act does not provide a warehouse for unused marks” so that someone can “wait[ ] for the deal that will make him rich man.” “[T]he Lanham Act was not intended to provide a warehouse for unused marks.” Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394 (Fed. Cir. 1990).

In other words, holding a mark with no use, with only an intent to sell the mark at some time in the future, is not proof of present use or intent to resume use.

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           Indeed, an intent to sell a trademark separate and apart from any established goodwill in the mark is evidence of trafficking in trademarks. See M.Z. Berger & Co., Inc. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1899 (Fed. Cir. 2015) (applicant's intent in filing the application was merely to reserve a right in the mark, and not a bona fide intent to use the mark in commerce); Caesars World v. Milanian, 247 F. Supp.2d 1171, 1192 (D. Nev. 2003) (reserving what the owner perceived to be desirable names with the intent to sell or license them to others).

The TTAB found Branded's “testimony regarding his efforts to license or sell the OLD SCHOOL trademark as too general and too vague to establish Respondent had an intent to resume use of the OLD SCHOOL mark in the ordinary course of trade in the reasonably foreseeable future, rather than to reserve a right in the mark until the right deal to license it sell it outright came along.”

“Respondent cannot rely upon mostly unsubstantiated assertions of vaguely defined efforts, apparently conducted without an operating budget, to license goods and services in order to keep someone else from adopting a mark it has abandoned.” Yazhong Investing Ltd. v. MultiMedia Tech. Ventures, Ltd., 126 USPQ2d 1526, 1539 (TTAB 2018).

Accordingly, the TTAB granted the petitions for cancellation on the ground of abandonment.

The trademark attorneys at Thomas P. Howard, LLC are experienced in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.