Friday, May 11, 2012

TTAB Dismisses MODEL AMERICAN Cancellation Petition for Failure to Make Prima Facie Case of Abandonment

In May 1995, American Computer Associates, Inc. (ACA) petitioned for cancellation of a registration for the mark MODEL AMERICAN for "computer hardware, namely processor, keyboard, monitor and memory unit and computer utility programs," on the ground of abandonment. Seventeen years later, after numerous motions and suspensions, the Board has dismissed the petition because ACA failed to establish a prima facie case of abandonment. American Computer Associates, Inc. v. Model American Computer Corporation, Cancellation No. 92023939 (May 10, 2012) [not precedential].

To prove abandonment, a plaintiff must show both nonuse and the lack of an intent to resume use. If it can show three years of nonuse, a prima facie case of abandonment is established and the burden shifts to the Registrant to show either that it used the mark or that it had an intent to resume use during that period.

ACA claimed that Respondent had ceased use of its mark for a period of at least three years prior to commencement of the proceeding, with no intent to resume use.

Respondent was put into receivership in 1992 and was prohibited by court order "from undertaking business, including the use of the mark." However, Respondent submitted evidence that it had licensed the mark prior to the receivership, to a company that continued to sell off inventory from 1992-1993. It also entered into a 20-year license of the mark in 1992. That licensee immediately began test marketing notebooks under the MODEL AMERICAN mark.

In 1995, that second licensee sub-licensed the mark to another company, which continues to use the mark for a software package. ACA claimed that the licensed software was not a "computer utility program" as recited in the registration, but the Board found otherwise based on witness testimony.

And so the Board concluded that ACA failed to prove a three-year period of abandonment. Although Respondent itself stopped using the mark from February 1992 to May 1995 (when this proceeding was commenced), it licensed the mark and received royalty payments. The Board found that use was never discontinued "by those whose actions inure to the benefit of Respondent during the relevant time period."

Moreover, the Board noted, even if three years of nonuse had been shown, the Board would find that Respondent at all times intended to resume use of the mark, based on witness testimony and on Respondent's filing of Section 8 and 9 affidavits for the registration.

And so the Board dismissed the petition for cancellation.

TTABlog comment: If the parties were agreeable to suspending the case for all that time, should the Board care? I understand that the Board takes some grief when its docket includes "old" cases that have yet to be resolved, but if the parties want to delay decision, and if it's not the Board's fault that resolution is delayed, why not let the sleeping dog lie? Why not put these voluntarily-suspended cases in a separate category so that any lengthy "time to decision" does not count against the Board in the measurement of its efficiency?

Text Copyright John L. Welch 2012.


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