February 1, 2015
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UNITED STATES: Non-Use Abandonment Fight Spews International Venom
Under Section 66(a) of the U.S. Lanham Act (Sec. 66 (15 U.S.C. §1141f), owners of international trademark registrations can extend trademark protection into the United States without proving prior use of the marks in the United States. However, under the Trademark Act, a registered mark can become abandoned if it is not used. In Dragon Bleu (SARL) v. VENM, LLC, Serial No. 91212231 (TTAB Dec. 1, 2014) (precedential), the Trademark Trial and Appeal Board (TTAB) decided how long and when that non-use must occur to create a presumption of abandonment for Section 66(a) marks.
VENM, LLC applied for the mark VENM for dance costumes. Dragon Bleu (SARL) opposed based on likelihood of confusion with its VENUM mark for martial arts apparel. VENM counterclaimed based on fraud, non-use and abandonment. Dragon Bleu moved to dismiss those counterclaims. The TTAB dismissed the counterclaims, and in doing so, clarified the requirements to prove abandonment of Section 66(a) registrations.
Under the Trademark Act, a mark is abandoned “[w]hen its use has been discontinued with intent not to resume such use. ... Nonuse for 3 consecutive years shall be prima facie evidence of abandonment”. Therefore, to survive a motion to dismiss on grounds of abandonment, a plaintiff must plead facts that would either establish three years of non-use or less than three years of non-use coupled with proof of intent not to resume use. Normally, the three years begins from the date that the applicant files its specimen of use, which is typically prior to registration. However, Dragon Bleu’s registrations were granted pursuant to Section 66(a), which does not require use of the mark prior to registration. Thus, the TTAB had to determine when the three-year abandonment clock begins ticking for Section 66(a) registrations.
Citing an analogous appellate court decision, the TTAB held that for Section 66(a) registrations, the three years of non-use is measured from the registration date. It reasoned that while Section 66(a) does not require use prior to registration, it does not excuse non-use after registration. Accordingly, the registration date is the earliest possible commencement date for the abandonment clock.
Finding that VENM failed to plead either three years of non-use from the registration date or less than three years coupled with intent not to resume, the TTAB dismissed VENM’s abandonment claim, but granted VENM 30 days to replead.
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