Summary
The Federal Circuit affirmed cancellation of a trademark registration obtained under Lanham Act §44(e) (based on a foreign registration) where the mark had never been used in U.S. commerce for over five years. The court held that the statutory presumption of abandonment from two consecutive years of nonuse applies equally to §44(e) registrants, and that a registrant cannot overcome that presumption merely by averring subjective intent not to abandon; instead, it must show excusable nonuse or activities from which an intent to resume use may reasonably be inferred. Imperial’s evidence of developing a marketing strategy and concerns about potential litigation were insufficient to raise a genuine issue of material fact, making summary judgment proper.
Topics
Questions Presented
- Whether the undisputed facts established that the JPS mark was abandoned under the Lanham Act, given a period of nonuse exceeding five years and the registrant's asserted lack of intent to abandon.
Holdings
- Yes, the mark is abandoned as a matter of law when the registrant fails to raise a genuine issue of material fact that its nonuse was excusable. A prima facie case of abandonment arises from nonuse for two consecutive years, and the registrant must proffer evidence of excusable nonuse, not merely a subjective intent not to abandon.
Key quotations
“The registrant must put forth evidence with respect to what activities it engaged in during the nonuse period or what outside events occurred from which an intent to resume use during the nonuse period may reasonably be inferred.”
“An averment of no intent to abandon is little more than a denial in a pleading, which is patently insufficient to preclude summary judgment on the ground the facts are disputed.”
Factual background
Imperial obtained a U.S. trademark registration for the JPS mark for cigarettes in 1981 under section 44(e) of the Lanham Act based on a UK registration, without any use in the United States. From registration until November 1986 (when Philip Morris filed a cancellation petition), there were no U.S. sales of cigarettes under the mark. Imperial made some sales in May 1987. Imperial asserted it had been developing a marketing strategy, pursuing licensing efforts, and had concerns about litigation with Philip Morris, but the board found these activities insufficient to excuse nonuse. The board granted summary judgment for Philip Morris, determining that the mark was abandoned as a matter of law.
Procedural history
Philip Morris filed a petition to cancel Imperial's trademark registration on grounds of abandonment. After discovery, cross-motions for summary judgment were filed. The board granted Philip Morris's motion, finding abandonment as a matter of law. Imperial appealed.