Abandoned? No, just modernized.

Is an original trademark abandoned if a subsequent modified version of the mark creates the same, continuous commercial impression?  In a case of first impression, the Federal Circuit answered in a resounding no.  Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 2015 WL 4934553, at *3 (Fed. Cir. 2015).  When Jack Wolfskin applied to register a nonhuman paw print as its mark for a variety of products, New Millennium Sports opposed, arguing that there would be likelihood of confusion.  Id. at *1.  New Millennium Sport’s already registered mark featured the word KELME with an adjacent paw print.  Id.

Jack Wolfskin’s counter was to argue 1) that there was no likelihood of confusion, and 2) that New Millennium Sports abandoned its original trademark, ceasing to use the original mark and instead using a modified, modernized version of the mark.  Id.  The novelty of the Federal Circuit’s decision comes with its opinion on Jack Wolfskin’s second argument.  New Millennium Sport’s modernized mark bares the same KELME inscription with an adjacent paw print, however, the font and paw print differ ever so slightly from the original mark.  See Id. at *4.  If successful, the abandonment argument would have allowed Jack Wolfskin to quash New Millennium Sport’s opposition to its trademark application.

The Trademark Trial and Appeal Board (“TTAB”) rejected Jack Wolfskin’s abandonment claim, and found the Jack Wolfskin mark would likely cause confusion.  Id. at *2Jack Wolfskin appealed.  Id.

A trademark owner abandons its mark if use of the mark has been discontinued with intent not to resume.  15 U.S.C. § 1127.  If a registered mark has been abandoned, a party may file a petition to cancel the registration at any time. 15 U.S.C. § 1064(3).  The fundamental question put forth is whether the original mark has been so substantially altered such that third parties would not expect that presently used mark to be used under and protected by the registration?  Jack Wolfskin v. New Millennium Sports, 2015 WL 4934553, at *3.  Acknowledging that other circuits had already adopted the standard, the Federal Circuit followed suit, applying the “same, continuing commercial impression” standard when evaluating whether changes to a mark result in abandonment of an earlier registered mark.  Id.

In analyzing New Millennium Sport’s original and modified marks, the Federal Circuit agreed with the TTAB’s findings that the alterations were stylistically minor.  Id. at *4.  Moreover, the word KELME was found sufficiently distinctive, carrying it to a level where stylistic alterations of the manner the word KELME was presented would not affect the impression created solely by the distinctiveness of the word.  Id.  Jack Wolfskin further argued that New Millennium Sport materially altered its mark with the addition of claws to the paw print, an argument both the TTAB and the Federal Circuit found unpersuasive.  Id.  Likewise, no persuasive reasons as to why the alteration changes the commercial impression were argued.  In the end, the Federal Circuit used the TTAB’s observation in its opinion, stating “[i]t appeared to be a paw before, and now it still appears to be a paw.”  Id.

The impact this case has on trademark law is indeed significant. The Federal Circuit has appellate jurisdiction on TTAB cases, and its decisions are used as precedent in deciding the fate of future trademark registrations.  A decision such as this one undoubtedly aids both the TTAB and practicing intellectual property attorneys in determining what changes to an existing trademark will likely be deemed abandoned, and which changes will allow trademark protections to continue.

Mauricio Vaca, J.D.

Phone: (786) 493-8361

Email: mv658@nova.edu

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