Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about:
Fourth Circuit Paves the Way for Trial on Trademark Infringement Claim Against T-Mobile
The owner of a trademark can lose rights by abandoning the use of the mark. Under federal trademark law, there is a presumption of abandonment following three consecutive years of non-use of the mark. If the three-year period is met, the owner has the burden to demonstrate that it did not intend to discontinue use of its mark. This is the question the U.S. Court of Appeals for the Fourth Circuit addressed in a recent decision.
Simply Wireless, Inc. claimed common law rights in the mark SIMPLY PREPAID and sued T-Mobile for its use of the identical mark. Simply Wireless does not own a federal trademark registration. Both companies have applied to register SIMPLY PREPAID marks and the applications are on hold pending the litigation.
From 2009 to 2011, Simply Wireless did not use the SIMPLY PREPAID mark. T-Mobile claimed that the non-use constituted abandonment. On cross-motions for summary judgment, Simply Wireless presented evidence including a declaration of its CEO regarding licensing negotiations with a third party and maintenance of a domain name incorporating the mark. Simply Wireless claimed that this evidence rebutted the presumption of abandonment.
The U.S. District Court for the District of Virginia ruled in T-Mobile’s favor. On appeal, the Fourth Circuit reversed and remanded, holding that Simply Wireless presented sufficient evidence to proceed to trial. In holding in Simply Wireless’ favor, the Fourth Circuit found that the evidence Simply Wireless presented was enough to demonstrate a genuine factual issue on abandonment.
The Fourth Circuit also held that the federal standard for abandonment applied to common law trademark rights. This is in contrast to T-Mobile’s argument that because Simply Wireless had only common law rights in its mark, it did not benefit from the federal law’s provision to overcome the presumption of abandonment after three years of non-use. The Fourth Circuit noted that its ruling may conflict with other circuits where simple evidence of the period of non-use is all that is required to show abandonment in a common law trademark case.
This case underscores the importance of providing detailed evidence in summary judgment. It also clarifies, at least in the Fourth Circuit, the standard applied for abandonment in common law trademark matters.
Federal Circuit Addresses Fame for Certification Marks
In an issue of first impression, the U.S. Court of Appeals for the Federal Circuit recently addressed how to determine the fame of a certification mark, remanding to the Trademark Trial and Appeal Board to consider whether the common law certification mark COGNAC is famous for purposes of likelihood of confusion and dilution.
In 2019, the Institut National Des Appellations d’Origine (INAO) and Bureau National Interprofessionnel du Cognac (BNIC) filed a notice of opposition against an application to register COLOGNE & COGNAC ENTERTAINMENT (stylized/design). INAO is a French governmental agency that handles the country’s appellations of origin and BNIC is a trade organization of producers of COGNAC brandy in the Cognac region of France. The opposition claimed that COLOGNE & COGNAC ENTERTAINMENT created a likelihood of confusion with COGNAC and diluted the COGNAC certification mark.
The Board ruled in the applicant’s favor and INAO and BNIC appealed. One of the issues on appeal was whether COGNAC is famous. The Board had considered evidence of extensive sales and advertising of goods bearing the certification mark but noted that, “[w]e cannot assume that success based on such evidence is a reflection of renown or fame of the certification mark, versus that of the various source-identifying marks used to sell the goods or services.” In other words, the Board declined to determine that COGNAC was famous based on sales and advertising figures when the certification is commonly displayed alongside brand names like Hennessy and Remy Martin.
The appeals court reversed and remanded, holding that the TTAB erred in dismissing the sales and advertising information as evidence of the renown of the COGNAC mark separate from the brand name of any producer of Cognac. Because the Board’s ruling found that COGNAC is not famous for purposes of the likelihood of confusion consideration, it also held that the mark is not famous for the more stringent dilution standard. The Federal Circuit remanded for reconsideration of both grounds for opposition.
This decision highlights differing considerations between public perception of trademarks versus certification marks, which are owned by the organization that certifies that products meet certain criteria but used by the producer of the products. Although the likelihood of confusion and dilution standards are the same for both trademarks and certification marks, this case indicates that the analysis of the facts may differ between the two.
