Interesting Trademark Law Fact 1: Abandonment

One way to lose a U.S. trademark registration is through “abandonment” of the mark. Among other ways, abandonment can be established by a showing of non-use of the mark in commerce. For example, if McDonald’s issued a press release stating that they were going to take Big Mac’s off their menu, and consequently stopped selling Big Mac’s, McDonald’s could likely lose their trademark in Big Mac’s for sandwiches in International Class 030.

However, courts have held that not all nonuse will lead to abandonment. An interesting series of cases occurred in the 1940’s where courts consistently held that suspension of a use of a trademark due to war would not lead to abandonment of a mark.

In Vaudable v. Montmarte, the famous Parisian restaurant Maxim’s was closed due to German occupation in WWII, and thus suspended it’s wine and catering services in New York, where it operated under the same name. Another New York restaurateur opened a replica of the Parisian Maxim’s in New York City, and the court fell deaf to the restaurateur’s claims that the real Maxim’s abandoned its trademark rights, finding no abandonment of the mark since Maxim’s business continued after the war in 1946. A similar finding on the abandonment-due-to-war issue. occurred in Chandon Champagne Corp. v. San Marino, involving the “Dom Perignon” mark. However, the ultimate result was against the owners of “Dom Perignon.”

Courts have refused to find abandonment in many situations where companies stopped using their trademarks due to outside circumstances: labor strikes, government seizures of foreign based companies, severely low levels of sales, and resource-intensive litigation causing a halt in business operations.

If you find your company needing to temporarily halt your trademark use due to severe outside circumstances, you may still preserve your trademark rights!

– ck

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