|
|
Author |
Topic: Is a Trademark Abandoned if? (Read 2330 times) |
|
Kellee Crisafulli
Guest
|
1) A trademark was sold in 1983 along with a company
2) The purchasing company discontinues using the trademark in 99% of it's literature and changes to a new trade mark but some old literature remains in use that was not modified.
3) The trademark registration expired in 1996
4) The associated patents expired in 1997
5) In 2004 the orginal owners feeling the mark is abandoned apply for and are granted a new registration with a new serial number.
6) The purchasing company threatens a law suite
on the basis that they are still using the mark in dozens of places on old material.
Is there a basis?
Is it a solid or weak case?
thx
Kellee
|
|
 IP Logged |
|
|
|
Isaac
Senior Member
Posts: 3472
|
 |
Re: Is a Trademark Abandoned if?
« Reply #1 on: Nov 4th, 2004, 6:56pm » |
 Quote  Modify
|
There are factors that could support saying the mark has been
abandoned, but it's impossible to say how strong the case
is on the facts you've cited. It's important to remember that
trademark rights arise from use and not from registration, so
if the company is still using the mark, their actual trademark
will not expire although they would lose some important advantages
that result from registration.
The expiration of a patent can adversely affect a mark in some situations,
but no one can tell on the facts you've described here. I believe
the the word mimeograph became generica because of the expiration of
a patent. Of course that would affect your use too.
Also your mark is too new to be considered incontestible.
My guess is that your case is not very strong, but there are
plenty of scenarios where that guess would be wrong.
|
|
IP Logged |
Isaac
|
|
|
JSonnabend
Moderator
Senior Member
Posts: 2251
|
|
Re: Is a Trademark Abandoned if?
« Reply #2 on: Nov 8th, 2004, 8:27am » |
Quote Modify
|
Trademarks become abandoned by non-use coupled with no intent to resume use of the mark. Unfortunately, this is a subjective test and often boils-down to an affidavit of intent to resume use from the owner.
On the patent front, generally speaking the expiration of a patent on a product has no bearing on the validity of marks covering the product. In certain, very limited cases, where a patented product is known only by the brand name, the name becomes generic by the time the product comes off patent. In effect, the TM had lost its status as such some time before expiration, but effectively lost that status only upon expiration of the patent, when others had an need to use it. That is, I believe, the "Mimeograph" story.
Finally, the continuing use of the mark in 1% of the companie's literature, if a valid use in commerce as a mark, is likely enough to avoid abandonment.
- Jeff
|
|
IP Logged |
SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
|
|
|
Isaac
Senior Member
Posts: 3472
|
|
Re: Is a Trademark Abandoned if?
« Reply #3 on: Nov 8th, 2004, 7:11pm » |
Quote Modify
|
Okay Jeff, you've called me on this patent effect on trademarks a couple of times  And fairly so.
I'll take this opportunity to expand on the issue. (In other words, I hauled out the casebook from law school).
The case cited in the case book is Kellogg Co. v. National Biscuit Co. 305 U.S. 111 at 118.
Some text quoted from the case :
"Since during the life of the patent 'Shredded Wheat' was the general designation of the patented product, there passed to the public on the expiration of the patent, not only the right to make the article as it was made during the patent period, but also the right to apply thereto the name by which it had become known."
I agree that generally speaking patentees do not lose their trademarks when the patent expires. My law school professor suggested that the way to avoid a trademark becoming generic in this way was to use a sacrificial descriptor (i.e. not the trademark) term in the patent to refer to the product. When the patent expires, the generic term gets sacrificed and the public can generically refer to the product using that term while the trademark gets preserved.
Perhaps law subsequent to Kellogg has further qualified the issue, but I think it's worth mentioning the law from the case when I'm asked to enumerate the ways a trademark can become generic.
|
|
IP Logged |
Isaac
|
|
|
JimIvey
Moderator
Senior Member
 
Posts: 2584
|
|
Re: Is a Trademark Abandoned if?
« Reply #4 on: Nov 9th, 2004, 11:44am » |
Quote Modify
|
Hmmm.... "Shredded Wheat" as a trademark? I'm a bit surprised it was ever a trademark. Sounds a bit descriptive to me.
A "sacrificial descriptor" is a good idea. The way I hear it said is that a trademark should only be used as an adjective, never a noun or verb. The bottom line is that there has to be some word/phrase a competitor making exactly the same thing can call their product. If you have a patent, it's easy to forget about that since you don't plan to have any competitors.
So, when the patent expired, what were the competitors supposed to call their product? Cereal is too generic, insufficiently specific. Kelloggs should have created both a brand name and a generic name -- Shredded Wheat grain pillows. Yeah, I know, that sucks. But that illustrates how they failed to fully appreciate the need for both a generic name and a trademark -- there really is no better generic name for shredded wheat than "shredded wheat."
A similar problem happened with aspirin. The chemical name is acetylsalicylic acid, but that's just too unwieldly for a convenient consumer-oriented generic name. How many of us today still ask for generic Tylenol? or generic Advil? instead of acetametaphin or ibuprophen, respectively? FWIW, I use the chemical names since I'm an IP geek, but I get a lot of blank stares from people until I substitute the nearly-generic trademark name for the chemical name.
Every now and then, it's good to step back to the fundamental reasons a given law exists. Trademarks exist for the benefit of the consuming public, not solely for the benefit of their owners. The consuming public needs to be able to discuss, ask for, and compare products and trademarks exist to facilitate.
Regards.
|
|
IP Logged |
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
|
|
|
|
|
Forums
Help
Search
Members
Calendar
Login
Register
Reply
Send Topic
Print
Remove