Cluster 411741

But see Exxon Corporation v. Humble Exploration Company, Inc., 695 F.2d 96 , 103 n. 10 (5th Cir.1983); Johnson & Johnson v. Carter-Wallace, Inc., 631 F.2d 186, 189 (2d Cir.1980).

See also Exxon, 695 F.2d at 101 (“The Act does not allow the preservation of a mark solely to prevent its use by others”).

Co., 695 F.2d 96, 102 (5th Cir. 1983)); cf. Maj.

Co., 695 F.2d 96, 102 (5th Cir. 1983)); cf. Maj.

Co., 695 F.2d 96, 103 (5th Cir. 1983) (claims under § 1125(a) “can be maintained by plaintiffs who are not owners of a trademark”); see also Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28-29 (2003) (“While much of the Lanham Act addresses the registration, use, and infringement of trademarks and related marks, § 43(a) is one of the few provisions that goes beyond trademark protection.”). 16 (1) Any person who shall, without the consent of the registrant-- …

Co., 695 F.2d 96, 99 (5th Cir. 1983). 8 Id. at 102–03. 9 Vais Arms, 383 F.3d at 295 (internal quotation marks omitted). 10 To the extent that the briefing raises additional arguments, we have considered them and find them without merit. 3

Once a party establishes a pri-ma facie case of abandonment, it becomes the mark holder’s burden to show that “circumstances do not justify the inference of intent not to resume use.” Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir.1983).

See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir.2001) (stating that plaintiff must show "that it had prior rights to the mark at issue" in order to prevail in a section 43(a) claim); Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 103 (5th Cir.1983) (stating that where a section 43(a) claim is based on alleged ownership of a mark, it is necessary to consider "[w]hether the mark has been abandoned" before considering merits of claim); P. Da…

See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir.2001) (stating that plaintiff must show “that it had prior rights to the mark at issue” in order to prevail in a section 43(a) claim); Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 103 (5th Cir.1983) (stating that where a section 43(a) claim is based on alleged ownership of a mark, it is necessary to consider “[w]hether the mark has been abandoned” before considering merits of claim); P. Da…

Although the ultimate burden of proof as to abandonment remains with the party asserting this defense, where non-use gives rise to the statutory presumption of abandonment, the trademark owner must come forward with evidence that the “circumstances do not justify the inference of an intent not to resume use.” Emmpresa Cubana del Tabaco v. Culbro Corp., 213 F.Supp.2d 247, 268 (S.D.N.Y.2002) (citing Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir.1983)).

The district courts in those cases did not permit the nonmovant an adequate opportunity to respond See Aviles v. Cornell Forge Co., 183 F.3d 598, 605 (7th Cir.1999)(employee not granted opportunity to respond to arguments raised in reply); Edwards v. Honeywell, Inc., 960 F.2d 673, 674 (7th Cir.1992)(district court improperly granted summary judgment in favor of defendant on ground not raised by either party; plaintiff was given no opportunity to respond). 12 See 15 U.S.C.A. …

Having “ ‘intent to resume’ requires the trademark owner to have plans to resume commercial use of the trademark.” Hiland Potato Chip Co. v. Culbro Snack Foods, Inc., 720 F.2d 981, 984 (8th Cir.1983) (quoting Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102-03 (5th Cir.1983)).

Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102-03 (5th Cir.1983).

GHL adamantly disagrees, asserting that it has continuously used the KENT marks in commerce within the meaning of the Lanham Act. 2 While the defendants bear the burden of proving abandonment by clear and convincing evidence, 3 “when a prima facie case of trademark abandonment exists because of nonuse of the mark for over two consecutive years, 4 the owner of the mark has the burden to demonstrate that circumstances do not justify the inference of intent not to resume.” Exxo…

Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir.1983).

Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir.1983).

See Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1582-83 (Fed.Cir.1990) (promotional use of mark in sales of whiskey, pens, watches, sunglasses, and food did not constitute use of mark for cigarettes); Silverman, 870 F.2d at 47-48 (sporadic licensing of mark for noncommercial purposes was not a use under the Lanham Act); Humble Exploration, 695 F.2d at 99-102 (token sales of small quantities of goods with “Humble” trademark to selected purchasers who knew th…

See Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1582-83 (Fed.Cir.1990) (promotional use of mark in sales of whiskey, pens, watches, sunglasses, and food did not constitute use of mark for cigarettes); Silverman, 870 F.2d at 47-48 (sporadic licensing of mark for non-commercial purposes was not a use under the Lanham Act); Humble Exploration, 695 F.2d at 99-102 (token sales of small quantities of goods with “Humble” trademark to selected purchasers who knew t…

Cf., Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir.1983) (where trademark was distributed with product invoices, and customers could not have relied on it in purchases, trademark was not “used”).

Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir.1983).

Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir.1983).

Exxon Corp. v. Humble Oil Exploration Co., 695 F.2d 96, 101 (5th Cir.1983) (Lanham Act does not allow protection of a mark solely to prevent others from using it; mark must be used in commerce).

However, as more precisely analyzed by Judge Higginbotham in Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102 , 217 USPQ 1200, 1204 (5th Cir.1983), in the factual context of those cases, see, e.g., United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134 , 209 USPQ 457 (3rd Cir.1981), the substitution of one phrase for the other made no difference.

In a case involving a defense of abandonment in a trademark infringement suit, the United States Court of Appeals for the Fifth Circuit stated that once prima facie abandonment is established the registrant has the “burden to demonstrate that circumstances do not justify the inference of intent not to resume use.” Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 , 217 USPQ 1200, 1202 (5th Cir.1983) (emphasis added).

Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir.1983).

Cf. Exxon Corp. v. Humble Exploration Co., supra, 695 F.2d at 102 (use must be “commercial use” to avoid abandonment).

“If the proponent of a mark stops using it but demonstrates an intent to keep the mark alive for use in resumed business, the mark retains ‘residual’ goodwill and thus continues to enjoy trademark protection, as long as it retains its significance as an indication of the origin of the goods or services.” Pan American World Airways, Inc. v. Panamerican School of Travel, Inc., 648 F.Supp. 1026, 1031 (S.D.N.Y.) (citation omitted), aff'd, 810 F.2d 1160 (2d Cir.1986); see also Mi…

HECI was formerly known as Humble Exploration Company, Inc. (Tr. 18) but changed its name apparently as a result of litigation brought by Exxon Corporation concerning the use of the name "Humble.” See Exxon Corp. v. Humble Exploration Co., 524 F.Supp. 450 (N.D.Tex.1981), aff’d in part, rev’d in part, 695 F.2d 96 *565 (5th Cir.1983), on remand, 592 F.Supp. 1226 (N.D.Tex.1984). 2 .

Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102-03 (5th Cir.1983). .

Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102-03 (5th Cir.1983). 108 .

Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir.1983). 30 .

See, e.g., Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 801, 804 (Fed.Cir.1984); Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99-100 (5th Cir.1983); La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271-72 (2d Cir.1974); cf. Stern Electronics, Inc. v. Kaufman, 669 F.2d 852, 857 (2d Cir.1982).

In Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102-03 (5th Cir. 1983) it is stated: There is a difference between intent not to abandon or relinquish and intent to resume use in that an owner may not wish to abandon its mark but may have no intent to resume its use....

See Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir. 1983) (“The burden of proof is on the party claiming abandonment, but when a prima facie case of trademark abandonment exists because of nonuse of the mark for over two consecutive years,6 the owner of the mark has the burden to demonstrate that circumstances do not justify the inference of intent not to resume use.”).

See Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 101 (5th Cir.1983) (finding “arranged sales in which the mark was not allowed to play its basic role of identifying source were not ‘use’ ” under § 1127); see also 2 J.

See Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102 (5th Cir.1983) (distinguishing "intent to abandon" from "intent not to resume use"); KeyCorp v. Key Bank & Trust, 99 F.Supp.2d 814, 827 (N.D.Ohio 2000) ("While intent to abandon was the touchstone of legal abandonment in early common law cases, the Lanham Act requires a showing of `intent not to resume,' rather than `intent to abandon.'"). 29 Of course, we recognize that "[n]othing in the statute entitles a registra…

See Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102 (5th Cir.1983) (distinguishing “intent to abandon” from “intent not to resume use”); KeyCorp v. Key Bank & Trust, 99 F.Supp.2d 814, 827 (N.D.Ohio 2000) (“While intent to abandon was the touchstone of legal abandonment in early common law cases, the Lanham Act requires a showing of ‘intent not to resume,’ rather than ‘intent to abandon.’ ”).

See Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 101 (5th Cir.1983) (“The Act does not allow the preservation of a mark solely to prevent its use by others.”) However, at that date, there is also arguable use due to the presence of the May 1999/2000 phone-books bearing the “Aliant” mark.

See Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102 (5th Cir. 1983).

The Lanham Act provides that “ ‘[u]se’ of a mark means bona fide use of such mark made in the ordinary course of trade.” 15 U.S.C. § 1127 (emphasis added); see Blue Bell, Inc. v. Jaymar-Ruby, Inc. 497 F.2d 433, 437 (2d Cir.1974) (noting the “clear line of decisions holding that the use must be bona fide, with token transactions accepted only where there is an accompanying intent to engage in commercial use in the future”); accord Exxon Corp. v. Humble Exploration Co., 695 F.…

See Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99-100 (5th Cir.1983) (recognizing that sham use of a trademark- — one instituted solely for the purposes of maintaining trademark rights — does not qualify as a “bona fide” use under the statute).

See Exxon Corp. v. Humble “new look,” threatening to remove from the Exxon chain Exploration Co., Inc., 695 F.2d 96, 99-100 (5th Cir. 1983) those stations that failed to comply by April 1, 1995. (recognizing that sham use of a trademark—one instituted solely for the purposes of maintaining trademark rights—does Exxon submitted evidence in an effort to show that, despite not qualify as a “bona fide” use under the statute). its efforts to convert the look of its gas stations a…

See Exxon Corp. v. Humble Exploration Co., Inc., 524 F.Supp. 450, 464-65 (N.D.Texas 1981), aff'd, 695 F.2d 96 (5th Cir.1983) (non-use of a mark for two consecutive years prima facie evidence of abandonment). .Two separate surveys were conducted on the same day.

See Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 102 (5th Cir.1983).

See Exxon Corp. v. Humble Exploration Co., 695 F.2d 96 (5th Cir.1983).

See, e.g., Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102-03 (5th Cir. 1983) (“There is a difference between intent not to abandon or relinquish and intent to resume use in that an owner may not wish to abandon its mark but may have no intent to resume its use. . . .

See also Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir.1983) (holding that limited sales of preexisting "Humble” branded oil with an explanation that these customers were receiving Exxon products were not sufficient to constitute "use” to avoid abandonment). .

See 15 U.S.C. § 1127 ; see also Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102-03 (5th Cir. 1983) (“There is a difference between intent not to abandon or relinquish and intent to resume use in that an owner may not wish to abandon its mark but may have no intent to resume its use. . . .

See 15 U.S.C. § 1127 ; see also Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102-03 (5th Cir.1983) ("There is a difference between intent not to abandon or relinquish and intent to resume use in that an owner may not wish to abandon its mark but may have no intent to resume its use. . . .