5
Jun/03

Fourth Circuit Case on Abandonment


Unpublished Fourth Circuit decision.  Plaintiff registered AUDITRON in stylized form thirty years ago.  Record indicated that he hadn’t used that stylized form for 15 years.  Defendant registered AUDITRON for hi-fi speakers, and then moved into health practice management software.  Defendant registered auditron.com.  Plaintiff brings infringement (section 32 but not 43(a) (infringement of an unregistered mark)) and cyber-squatting causes.  The cybersquatting action was dismissed as defendant clearly registered the name in good faith, having used it for years.  The infringement cause was dismissed as plaintiff had abandoned the stylized form.  An allegation of infringement under 43(a) could have led to an interesting discussion in view of the unusual jump by defendant from speakers to management software.

Practice point for pro se trademark plaintiffs:  Always bring 43(a) because if for no other reason, your registration could get cancelled.

Another practice point: plaintiff’s loss of his registered rights illustrates why someone’s first trademark application should be for a word mark or ‘typewriter letters’ as some call it.  A company is much more likely to change its stylization over time than its housemark.

Sloane v. Auditron Electronic , 02-1787 (Fourth Circuit, June 5, 2003) (unpublished).

 

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