Exxon Corporation, Humble Oil & Refining Corporation, Humble Gas Transmission Co. and Humble, Inc. v. Humble Exploration Company, Inc.

Summary

The Fifth Circuit held that Exxon’s limited, arranged sales of products bearing the HUMBLE name, made as part of a trademark maintenance program, were insufficient uses to avoid prima facie abandonment under the Lanham Act. The court reversed and remanded for a determination of whether Exxon intended to resume commercial use of the HUMBLE trademark. It also held that Exxon’s false-designation claim under section 43(a) depended on the abandonment inquiry.

Holdings

1. Limited sales of packaged products to targeted customers and arranged bulk sales through affiliated name-protection companies were not sufficient uses of HUMBLE to avoid prima facie abandonment under 15 U.S.C. § 1127 because the mark did not function as an identifier of the source of the goods.
2. An owner's intent not to relinquish or abandon a mark is not equivalent to the statutory intent to resume use; to rebut prima facie abandonment, the owner must have plans to resume commercial use of the mark.
3. To the extent Exxon's § 1125(a) claim was based on ownership of the HUMBLE mark, it rose or fell with the abandonment issue and had to be analyzed in parallel with §§ 1114 and 1115.
4. The district court's finding of likelihood of confusion between Exxon's HUMBLE mark and Humble Exploration Company was not erroneous.

Questions Presented

1. Whether Exxon's limited arranged sales and trademark-maintenance activities constituted use sufficient to avoid prima facie abandonment of the HUMBLE trademark under 15 U.S.C. § 1127.
2. Whether the district court improperly treated an intent not to abandon or relinquish the mark as equivalent to the statutory requirement of an intent to resume use.
3. Whether Exxon's claim under 15 U.S.C. § 1125(a) depended on resolution of the abandonment issue.
4. Whether the district court erred in finding likelihood of confusion with respect to the relevant public.

Disposition

reversed_and_remanded