How To Prove A California Abandonment of Trademark Defense

 

How To Prove A California Abandonment of Trademark Defense

 

In California, a defense of Abandonment of Trademark is defined as:

Trademark abandonment is the nonuse of a word, name, symbol, design, or any combination thereof along with the intent not to resume use of it.

It simply means:

A company has apparently stopped using its name, logo, etc. and someone else wants to use it.

There are 3 elements of the defense:

  • Element 1. The plaintiff is or was the owner, assignor, or licensor of a trademark. The plaintiff is someone who either owns, has transferred, or has given permission to use a trademark, which is important in proving their rights in a case about whether that trademark has been abandoned.

    Facts that might support this element look like:

    * The plaintiff registered the trademark with the United States Patent and Trademark Office in 2010, establishing ownership.
    * The plaintiff has consistently used the trademark in commerce since its registration, promoting their products and services.
    * The plaintiff has provided evidence of sales and marketing materials featuring the trademark over the past five years.
    * The plaintiff has granted licenses to third parties to use the trademark, demonstrating their ownership and control.
    * The plaintiff has actively enforced their trademark rights against unauthorized users, indicating ongoing ownership.

  • Element 2. The plaintiff discontinues use of the trademark in the ordinary course of trade. The plaintiff stops using their trademark in regular business activities, which can suggest that they no longer intend to maintain their rights to that trademark, potentially leading to claims of abandonment.

    Facts that might support this element look like:

    * The plaintiff has not used the trademark in commerce for over three consecutive years, indicating a lack of intent to maintain its trademark rights.
    * The plaintiff has failed to enforce its trademark against known infringers, suggesting a disregard for the trademark’s value.
    * The plaintiff has publicly stated that it no longer intends to produce or sell products under the trademark, signaling an abandonment of its brand.
    * The plaintiff’s website and marketing materials have not featured the trademark for an extended period, demonstrating a discontinuation of its use.
    * The plaintiff has not renewed its trademark registration, which is a strong indicator of its intent to abandon the mark.

  • Element 3. The plaintiff intends not to resume use of the trademark. The plaintiff has decided not to use the trademark again, which shows they have abandoned their rights to it, making it easier for others to claim or use that trademark without legal issues.

    Facts that might support this element look like:

    * The plaintiff has not used the trademark in commerce for over three consecutive years.
    * The plaintiff has publicly stated their intention to discontinue the use of the trademark in future business endeavors.
    * The plaintiff has failed to respond to inquiries regarding the trademark’s status from potential licensees.
    * The plaintiff has allowed the trademark registration to lapse without any attempts to renew it.
    * The plaintiff has not taken any steps to enforce their rights in the trademark against third-party users.

(See Leventhal v. Ollie Morris Equip. Corp., 184 Cal. App. 2d 553 – Cal: Court of Appeal 1960. California Western School of Law v. California Western University (1981) 125 Cal.App.3d 1002, 1006. Mallard Creek Industries, Inc. v. Morgan, 56 Cal. App. 4th 426 – Cal: Court of Appeal, 2nd Appellate Dist., 7th Div. 1997. Jackson v. Universal Internat. Pictures, 36 Cal. 2d 116 – Cal: Supreme Court 1950.)
If you’re in court without a lawyer and plan to assert a Defense of Abandonment of Trademark, it’s essential to have a Personal Practice of Law at Courtroom5. You’ll need to make critical decisions about what to file at each phase of your case and prepare legal documents supported by thorough legal research and a strong analysis of the facts. Equip yourself with the tools and knowledge necessary to effectively navigate your legal journey.

Prove Your CA Abandonment of Trademark Defense

U.S. Civil Cases Only

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