Use It or Lose It
Tuesday, 22 August 2017
If you don’t use your trademark, someone else can claim priority over you. SPV Coach Company, Inc. filed a trademark application for ARMBRUSTER STAGEWAY in connection with vehicles, namely, customized limousines. Executive Coach Builders, Inc. opposed registration claiming that it had started using the mark before SPV and so had priority of use. The TTAB denied the opposition holding that Executive Coach had abandoned the mark. Further, Executive Coach couldn’t prove that it had any intent to resume use of the mark once it was abandoned. The TTAB cited Executive Coach’s lack of any documentary evidence and the inconsistent and contradictory testimony of its president to support the abandonment ruling. Executive Coach’s alleged use of the abandoned mark was isolated and de minimus. Executive Coach took no orders for branded vehicles. Executive Coach’s domain name didn’t identify the goods or services. Displays at Executive Coach’s plant merely showed historical and not current use of the trademark. So, SPV had priority because of its constructive use of the mark after Executive Coach’s abandonment.
WHY YOU SHOULD KNOW THIS. If a trademark isn’t used for 3 consecutive years, it is deemed abandoned. The presumption of abandonment can be overcome if the owner can prove intent to resume use. Executive Coach had two problems. First, SPV started using the mark after Executive Coach abandoned it. Second, Executive Coach couldn’t prove it intended to resume use of the abandoned mark. A trademark owner can avoid Executive Coach’s fate by never letting non-use go for more than 3 years. And during that period, at the very least, the owner should document marketing activity and other affirmative acts designed to resume use.