Category Archives: Abandonment

Yellowbook v. Brandeberry: Can you sell your a trademark and then continue to use it?

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Yellow PagesSteven Brandeberry operated a phonebook business under the name AMTEL.  In 2002, Brandeberry sold his phonebook business to Barney White who then sold the business to Yellowbook.  In 2009, Brandeberry decided to start up another phonebook business and call it AMTEL.  Not surprisingly, Brandeberry was promptly sued by Yellowbook.

Brandeberry argued that the AMTEL name was owned both by him individually and his company.  Since only his company singed the sale agreement to Barney White he individually still owned the trademark AMTEL.  The district court agreed, finding that since the sale to Barney White did not involve Brandeberry individually, Brandeberry retained his individual trademark rights and White merely received a non-exclusive right to use the AMTEL mark.

On appeal to the United States District Court for the Sixth Circuit, Yellowbook argued that the agreement with White should be read to transfer the entire ownership of the mark to White.  Yellowbook further argued that even if Brandeberry retained some rights in 2002, by 2009 Brandeberry had abandoned any trademark rights.

The Sixth Circuit reversed the district court holding that Brandeberry never held an individual right to the trademark AMTEL.

The most basic problem with the district court’s reading is that no part of the contract makes any mention of joint ownership. Brandeberry and his corporation are always collectively referred to as a singular “licensee.”
. . .
As 100% owner of American Telephone, Brandeberry had no reason to retain any individual stake. Burkhalter made sure Brandeberry signed the contract in his individual capacity to hold him personally liable for the $50,000 purchase price of the trademark, not to bifurcate the property rights between Brandeberry and his corporation.

The Sixth Circuit further held that any rights Brandeberry may have held have long since been abandoned.

Even if we were to hold that Brandeberry acquired an individual right that he did not transfer in 2002, Brandeberry abandoned any such right over the next several years.
. . .
To prove abandonment, a party must demonstrate both non-use and intent not to resume use. Kellogg, 209 F.3d at 575. Here, it is undisputed that Brandeberry did not use the AMTEL mark (and conversely that White did) from 2003 to 2009. This six-year period of non-use puts Brandeberry well beyond the three-year statutory presumption for abandonment. 15 U.S.C. § 1127. At this point, the burden shifts to Brandeberry to demonstrate intent to resume use. Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 1391 (Fed. Cir. 2010).

The court therefore reversed the decision of the district court finding in favor of Yellowbook.

Does the service mark Brewskee-Ball infringe the trademark Skee-Ball?

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Skee-Ball, Inc. the owner of the Skee-Ball brand of games — popular at amusement arcades for more than 100 years — filed a trademark lawsuit against Full Circle United (“Full Circle”), a company that runs Skee-Ball tournaments under the name “Brewskee-Ball.”

Defendant Full Circle is a customer of Skee-Ball, Inc., using standard Skee-Ball machines manufactured by Skee-Ball, Inc. for its Brewskee-Ball tournaments.  Despite this relationship, Skee-Ball, Inc. seeks to stop Full Circle from using the name “Brewskee-Ball” claiming it infringes, dilutes, and tarnishes its famous Skee-Ball mark.

In Skee-Ball, Inc.’s complaint, the company points out that the trademark Brewskee-Ball incorporates the famous mark Skee-Ball in the mark itself as well as in its the description of services.  Specifically, Brewskee-Ball was filed for the following services, “Entertainment in the nature of skee-ball games; entertainment services, namely, arranging and conducting of skee-ball competitions; providing a website that provides statistics for skee-ball league players; providing recognition and incentives by the way of awards to demonstrate excellence in the field of skee-ball.”

Skee-Ball, Inc. points to TMEP Section 1402.09, which states that another company’s trademark should not be used in the identification of services for a different company’s mark.  Rather, a generic word should be substituted. (Which, of course, begs the question – what is the generic name for Skee-Ball?)

In response, Full Circle argues that the word “skee-ball” has become generic for the game and that the trademark office required it to use the word “skee-ball” in its description of services.  Full Circle further argues that it has a federal registration for Brewskee-Ball, which it obtained in 2008 without opposition from Skee-Ball, Inc..  (Most likely, the application was not on Skee-Ball, Inc.’s radar as a search for “skee” or “skee-ball” would not turn up a pending application for Brewskee-Ball.)

There is an obvious connection between the trademark “Skee-Ball” and the service mark “Brewskee-Ball.”  Without a doubt, Brewskee-Ball is merely the word “brew” added to Skee-Ball.  That being said, it is difficult to imagine that anyone would believe that “Brewskee-Ball” was somehow sponsored by the manufacturers of Skee-Ball machines, rather than the bar where the tournament takes places.  Moreover, an increase in popularity of “Brewskee-Ball” would only serve to increase the sales of official Skee-Ball machines.  Skee-Ball, Inc. could even come out with a “tournament” line of machines to sell to bars that wanted to host tournaments.  Another synergistic opportunity lost to trademark litigation.

If Skee-Ball, Inc. is concerned with the tournament name “Brewskee-Ball” is it also concerned about the names of the teams in the Brewskee-Ball league?  Does the Skee Amigos, Skee Patrol, or Skee’s Company further infringe the Skee-Ball brand?  We will just have to wait and see as this case is just getting started.

The case was originally filed by Skee-Ball, Inc. in California.  Recently the court in California transferred the case to New York after Full Circle filed a motion to dismiss for lack of personal jurisdiction in California.  Now the fun moves back east as this case continues.

If You Don’t Use Your Bling You Lose Your Bling

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In a fierce bling battle, a federal court in New York has held that a trademark owner lost its rights in a registered trademark because it was not making sufficient use of the mark in commerce. The Gameologist Group, LLC v. Scientific Games International, et al., 09 Civ. 6261, (United States District Court for the Southern District of New York)

In the case,  Gameologist Group, LLC obtained a trademark registration for “BLING BLING 2002” for an online casino game and a board game. The plaintiff’s founder Jeffrey McGill testified that he chose the name BLING BLING because

it was [a] new song out and it was at the top of the charts and everybody was going crazy. And I knew. If a casino game was named Bling Bling, forget about it.

In 2003 Gameologist began reaching out to various lottery companies about making a Bling Bling lottery game. Gameologist eventually entered into a licensing agreement with a subsidiary of the defendant Scientific Games International. In mid-2004 the licensing agreement was canceled, with the Scientific Games subsidiary claiming that no state lotteries were interested in developing a Bling Bling lottery game. Gameologist asserts that this was simply a ruse so Scientific Gaming could use the Bling Bling idea for its own commercial benefit.

Three years later in 2007 Scientific Gaming began marketing its own Bling games including “$50,000 BLING” ticket for the Georgia Lottery, an “IT’S A BLING THING” ticket for the New Hampshire Lottery, a “BLING ME THE MONEY” ticket for the Kentucky Lottery, a “SPRING BLING” ticket for the New Mexico Lottery, and a “$10,000 BLING” ticket for the District of Columbia Lottery.

Gameologist subsequently sued and Scientific Gaming filed for summary arguing, in part, that even though Gameologist has a federal registration for Bling Bling 2002, it has little to no rights in the mark because it never made significant use of the mark in commerce. As the Court summarized the crux of the issue,

[T]he defendants contend that the plaintiff has not made sufficient use in commerce of the “BLING BLING 2002” mark so as to entitle the mark to protection. The right to exclusive use of a trademark derives from the use in commerce of the mark, rather than from the mark’s mere adoption. 15 U.S.C. § 1125; United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918). The Lanham Act defines “use in commerce” as the “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. “The talismanic test is whether or not the mark was used in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.” Int’l Healthcare Exch., Inc. v. Global Healthcare Exch., LLC, 470 F. Supp. 2d 365, 371 (S.D.N.Y. 2007) (internal quotation marks and citation omitted).

Although Gameologist did make five hundred board games under the name Bling Bling 2002, it could only document that four copies were ever sold. Gameologist also claims to have “attended trade shows and gaming expeditions, created prototypes of products, purchased an “email blast” announcing a “Bling Bling” casino game to the gaming industry, disseminated press releases, and took out advertisements.” The Court, however found Gameologist’s documentation regarding these activities completely lacking.

Regarding the Bling Bling 2002 trademark, the Court held that because Gameologist did not use it, it would lose it.

The plaintiff has failed to raise a genuine issue of material fact that its use of the mark “BLING BLING 2002” in commerce has been anything but “sporadic, casual or transitory.” La Societe Anonyme, 495 F.2d at 1272. Accordingly, the plaintiff’s mark is not entitled to protection and the defendants are entitled to summary judgment on the plaintiff’s Lanham Act trademark infringement claim on this basis.

Gameologist’s state law claims for unjust enrichment and quantum meriut likewise failed. The court held that because Gameologist had no rights in the Bling Bling 2002 mark, Scientific Gaming was free to use the mark Bling with complete disregard to Gameologist.

While the plaintiff has presented some evidence that the defendants knew of the plaintiff’s mark when they created the lottery tickets in question, the plaintiff has failed to raise a genuine issue of material fact that the defendants appropriated something to which they were not entitled. This is because, as discussed above, the plaintiff did not have a valid mark that was entitled to protection against any alleged copying by the defendants.

Gameologist has appealed this case to the United States Court of Appeals for the Second Circuit. It will be interesting to see whether that court reverses. The “it stinks” evidence in favor of Gameologist is clearly the fact that Scientific Gaming’s subsidiary entered into a license agreement with Gameologist, canceled it, and then Scientific Gaming subsequently developed numerous Bling lottery games.

Regardless, the important take away from this case is that while it is critically import to protect your trademarks by obtaining federal registrations, it is equally important to use your trademarks in commerce. As this case points out, if you do not use your trademark then you do not actually have a trademark to protect.

Chrome Turf War: Did Google abandon the Chromium Trademark?

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Chromium OS is the open source development version of Google Chrome OS.  Google filed an application for Chromium back in September 2008 and began using the term a few months later in December 2008.  On November 19, 2009, Google released its Chrome OS source code as Chromium OS under the BSD license.

Seven months later, in June 2010, ISYS Technologies, Inc. a Salt Lake City based technology company filed a trademark application for ChromiumPC.  ISYS filed the application as an “intent to use” application meaning that ISYS was not yet using the mark in commerce, but intended to do so in the future.  Apparently, the mark was slated for a company related to ISYS, Xi3 Corp.  According to the Xi3 website ChromiumPC is “the world’s first desktop computer designed to run Google’s Chrome operating system.”

On May 23, 2011, Google filed an opposition proceeding against the ChromiumPC mark indicating that the mark ChromiumPC is likely to cause confusion with its mark for Chromium.  (Based on Xi3 Corp’s admission in its press release that ChromiumPC is its PC which runs the Google Chrome OS, another possible grounds for opposition –not yet argued by Google– is that ChromiumPC is generic for a PC which runs the Chromium operating system.)

On June 6, 2011, ISYS responded with a lawsuit against Google.  Although it filed the mark as an “intent to use” trademark, ISYS now claims in the lawsuit that it has been using the ChromiumPC since 2009.  This claim appears to be based on the President of ISYS, Jason Sullivan, registering the domain name www.chromiumpc.com on November 20, 2009 — which, not surprisingly, is one day after Google announced Chromium OS.  Clearly, ISYS’ use of the Chromium name is tied to Google’s well-known trademark for Chromium.

In the complaint, however, ISYS argues that any rights Google may have had in the mark Chromium have been abandoned:

33. Google abandoned any trademark rights in Chromium software by failing to control the nature and quality of the open source software developed by others but at the same time permitting others to distribute the third party software under the Chromium mark.

This argument, if accepted by the court, would put the trademarks of every open-source project in danger of abandonment.  The basis of this argument is known in trademark law as the “Naked Licensing Doctrine.”  That doctrine states that  a trademark owner no longer has a valid trademark if it licenses the mark in such a way to others that the mark no longer has any meaning.

The 10th Circuit court of appeals, which covers the District of Utah where the complaint was filed, has recognized this doctrine:

“When ‘a trademark owner engages in naked licensing, without any control over the quality of goods produced by the licensee, such a practice is inherently deceptive and constitutes abandonment of any rights to the trademark by the licensor.’” Stanfield v. Osborne Indus., 52 F.3d 867, 871 (10th Cir. 1995).

Here, however, it is not clear that Google has licensed its Chromium mark to anyone, let alone engaged in “naked licensing.”  While the Google-authored portion of Chromium is released under the BSD license, other parts are subject to a variety of different open-source licenses, including the GNU General Public License (GPL), MIT License, the LGPL, the Ms-PL, and the MPL/GPL/LGPL tri-license.  Regardless, none of these licenses grant any trademark rights.

Concurrently with the filing of the lawsuit ISYS filed an emergency motion for injunction relief.  In this motion ISYS again argues that Google abandoned the Chromium mark:

In this case, Google began an open-source software initiative in late 2008. Google invited independent third party software developers to participate. Many did so. Google failed to exercise quality control over the software developed by the third parties. Exhibit 7. Google permitted the third parties to do whatever they wanted in software development. Id. Google chose not to control, inspect, verify or guarantee any of the software prepared by the third parties. Id. Nevertheless, Google permitted and encouraged the third parties to brand their varying independent software products with the mark CHROMIUM. Id. his is classic trademark abandonment. By abandoning control of uses of the mark CHROMIUM, Google has forfeited all rights to a CHROMIUM mark software.

ISYS, of course, fails to produce any evidence from these third-party developers who are allegedly running wild with the Chromium trademark.  (A quick internet search did not turn up any third-party developers using the mark in this manner).

As evidence ISYS attaches Exhibit 7 to the Motion, which are print-outs from Google’s chromium.org website and news articles.  No pinpoint sites are provided to explain where developers are utilizing an alleged naked license.

The President of ISYS, Jason Sullivan, states in a declaration in support of the motion that “Since 2009, ISYS has continuously promoted its new computers under the CHROMIUMPC brand at trade shows.”  However no brochures or documentation dated in 2009 are provided as evidence.  His declaration does include a picture of a computer allegedly branded with the ChromiumPC mark (although it is difficult to say whether that is an actual branded product or a mock-up of what the logo would look like on the product.)

Stay tuned.  A hearing in this matter has been set for June 14, 2011.  We should learn then whether ISYS’ creative “abandonment” argument has any traction.