Mondelez International Inc. owns a lot of trademarks. One of them is “Chiclets” for gum. Mondelez almost lost it.

Retrobrands USA LLC acquires and relaunches well known abandoned brands, like Chipwhich, Ken-L Rations, Modess, Mr. Microphone and Saniflush. When Retrobrands discovered that Mondelez stopped selling Chiclets in 2017, Retrobrands filed an intent to use application for the trademark. The application was rejected.

Retrobrands appealed the rejection to the Trademark Trial and Appeal Board.

In April, 2018, Mondelez starting selling Chiclets again. Retrobrands argued that Mondelez had abandoned the mark and that the decision to start using the brand was a direct response to Retrobrands’ intent to use application.

The Board held that Retrobrands hadn’t established abandonment. Generally, abandonment is presumed if the trademark isn’t used for 3 or more years. The abandonment period in this case was less than 3 years. The Board noted evidence that Mondelez and its predecessors had used the Chiclet’s brand since the early 1900s and never officially decided to permanently discontinue the brand. The Board pointed to the fact that only one of Mondelez’s licensing “family” had stopped selling Chiclets. But a Mondelez had other licensees who could start manufacturing the gum. Also, customer service emails don’t "unequivocally state that the mark will no longer be used." In those emails, Mondelez said in part that it "can't guarantee this will be an item we'll make in the future" and "[a]t this time there are no plans to bring back this product”.

The Board affirmed the rejection.

WHY YOU SHOULD KNOW THIS. The Board’s analysis has some quirks when it comes to determining abandonment. The customer service emails say that there are no plans to bring back the product. That could easily have been interpreted as express abonnement. In fact, in another case involving the trademark “Hydrox” for sandwich cookies, a similar customer service email was considered proof of abandonment (See IP News for Business, 3/22/16). In the Chiclet case, the Board looked to “negative” rather than “positive” evidence that Mondelez hadn’t abandoned the trademark. In other words, it’s not what Mondelez said; it’s what Mondelez didn’t say.

In the current economic climate, we’re probably going to see a lot companies suspend the manufacturing of their products. Some will go out of business. Some will choose to abandon less profitable brands. Others are going to wait for the economy to pick up and then resume manufacturing. If your company is in the last category, be sure to keep a written record of your intent to resume use of the brand. Internal memos, statements on the company website and customer service statements are examples of a written record.