back

Just as actual use of a trademark is absolutely essential to any claim of trademark rights, termination of actual use terminates any claim of trademark rights.

It is, as one might imagine, rare that the holder of a trademark goes to the trouble of expressly declaring to the world that the holder is no longer using the trademark and no longer claims any rights with respect to it. In this regard, many trademarks die because the business with which they are associated dies, and the last thing those associated with a dying business will do, as a practical matter, is spend time acknowledging the death and employing the same kind of care in winding up the business (and the trademark) as was employed in creating them in the first place.

Given the foregoing, the term "abandonment" is an appropriate term to utilize with respect to trademarks which are no longer used. The attention of the trademark holder is diverted to other matters.

In this case, Small presented evidence that Big renamed the newsletter after the winter issue of 2004 and never thereafter used TaxHQ for the newsletter. Big claims that this alleged abandonment occurred because Big did not want people confused about the concurrent use of TaxHQ as a newsletter and as the name of a website as well. Small, on the other hand, points out that if you are using a service mark you ordinarily want to use it as much as possible, and that there is nothing inconsistent about using TaxHQ as the name of a newsletter and also as part of the name of a website ("Big TaxHQ").

In any event, Big did not present any evidence of the reasons given to the outside world for changing the name of the newsletter, as one would expect if Big felt that it had so much goodwill involved with the name TaxHQ. If Big really meant to transfer the alleged vast goodwill associated with the mark TaxHQ as the name of its newsletter to Bigs TaxHQ as the name of its website, or even as the service mark for the entire company itself, and had spent the millions it claims to have spent on the TaxHQ newsletter, then one would think that, at the very least, Big would provide evidence of communications with its clients explaining that it was rebuilding its image and that it was now operating as Big TaxHQ for all purposes whatsoever.

Instead, it simply gave its newsletter a new name and consigned the former name of the newsletter (TaxHQ) to the dust bin of history. In short, it does not appear that Big made any attempt to connect the two uses Big was making of TaxHQ (the past use it made of TaxHQ as the name of the newsletter, and the new use it was making of Bigs TaxHQ for other purposes) as one would think would have been done if Big intended to tack the priority of the dead use on the newsletter to the new use as a part of Big TaxHQ.

From Small's standpoint, the argument is that if Big made no attempt to tie its two uses together, then the court should not permit it to tie its two uses together (as a change of use or otherwise) in a belated effort to leapfrog Small's appearance on the scene in 1999.