Trademark Abandonment Requires More than Nonuse

On November 21, 2013, in Trademarks, by Brian A. Hall

A recent case out of the United States District Court, Middle District of Florida, highlights a trademark issue that clients regularly ask about – abandonment of a trademark.  If a trademark is abandoned, the previous trademark owner no longer can claim exclusive trademark rights in that mark.  The issue recently arose at the hearing of a motion for summary judgment in an effort by defendant suntan lotion provider, Australian Gold, to prove that Plaintiff Health & Sun Research’s Royal Flush and Purple Rain marks have been abandoned.

As the Court made clear, not only must the moving party prove that the trademark owner’s use has stopped, but it must also show that the trademark owner’s intent was to not resume any use.  This is a heavy burden for the moving party because “if a trademark holder ceases using a mark with an intent not to resume its use, the mark is deemed abandoned and falls into the public domain and is free for all to use. Abandonment paves the way for future possession and property in any other person.”

In this case, the Court held that genuine issues of material fact, namely whether Plaintiff intended to resume use of Royal Flush despite its nonuse, prevented granting summary judgment.  This is so even though, given a three year lapse in use, Australian Gold enjoyed a rebuttable presumption that Health & Sun does not intend to resume use of the Royal Flush mark.  Ultimately, the Court distinguished a case where a CEO’s self-serving affidavit of an intent to resume use did not rebut the presumption.  It did so based upon the fact that, here, there was additional evidence that could be used to show an intent to resume use, including the fact that Health & Sun continues to produce and distribute such lotions and demand still exists.

Trademark attorneys are well-served to advise their clients about abandonment issues and understand that the predominant view by Courts is that evidence of both no use and an intent to not resume use will be needed to prevail on any abandonment theory.

Health & Sun Research, Inc. v. Australian Gold, LLC, 8:12-CV-2319-T-33MAP, 2013 WL 6038748 (M.D. Fla. Nov. 14, 2013).


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