Michael J. Foycik Jr., Esq.

The question of when a trademark owner has abandoned their trademark is often important, yet there are not many guidelines on this issue.  Further, there is a question as to what activities and what evidence is needed by the trademark owner to sustain their rights to a trademark.  The following TTAB decision illuminates these points, and is therefore of interest to trademark practitioners.

 This article relates to the cancellation proceeding in American Computer Associates, Inc. v. Model American Computer Corporation, Cancellation No. 92023939, decide July 2, 2012.  It is on a Request for Reconsideration from a prior Board decision.  The mark in question is MODEL AMERICAN.

 The problem at issue is a three year period of non-use by the Respondent, which had entered receivership.  The Petitioner wishes to have the Respondent's registration of this mark canceled so that the Petitioner could use it themselves. 

 There are certain types of activities which could sustain Respondent's registration despite the lack of use.  Examples arise in this case, in which the Respondent conducted test marketing, and also licensed the mark to another company.  Further, the intent to re-establish use is a factor too.  These factors weighed in favor of the Respondent, and this excused Respondent's three years of non-use.

 In this Petition, arguments were made that no substantial evidence was presented on any of the foregoing points.  However, the mere existence of a license, and the stated intent to continue or re-establish use, were deemed sufficient by the TTAB.