Vans has prevailed in a long-running attempt to cancel an unrelated company’s OLD SCHOOL trademark registrations for use on men’s and women’s apparel and footwear, successfully arguing that Branded, LLC failed to consistently use the trademarks and had no intent to resume use. On the heels of issuing a final decision this summer, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) formally cancelled Branded’s registrations for the OLD SCHOOL mark this fall. The cancellations come almost five years after Vans first filed petitions for cancellation, arguing that it was being damaged by Branded’s registration since the USPTO refused to register its own OLD SKOOL mark because of a likelihood of confusion with Branded’s trademarks.
Looking to get Branded’s registrations (Reg. no. 1387606, 1915132, and 1570438) cancelled on the basis that they had been abandoned by the company, Vans claimed that “online research and inquiries directed to [Branded] failed to reveal any evidence” of Branded using the OLD SCHOOL mark on apparel or footwear within “at least the last three years.” Vans – which began using its OLD SKOOL trademark on footwear in 1992 – also asserted that Branded did not consistently police infringements of the OLD SCHOOL mark, the first uses of which date back to the 1980s.
Southern California-headquartered Vans argued in a subsequent filing that Branded’s trademark registrations should be also cancelled given that it acquired them by way of an invalid assignment. Specifically, Vans alleged that Branded amassed the OLD SCHOOL registrations in 2009 from Harold’s Stores, Inc., which was in the midst of liquidation. The issue, according to Vans, is that Branded’s acquisition of the registrations came with “no accompanying goodwill or ongoing business.”
In addition to Harold’s business “ceasing to exist, [a third party] gobbling up [its] tangible assets, and [Branded] acquiring merely the registrations,” Vans argued in its 2017 petitions that Dallas-based Branded stopped using Harold’s OLD SCHOOL marketing materials and failed to “obtain customer lists,” thereby, “relegating the assignment to a mere transfer in gross.”
Fast forward to August 2022 and the TTAB issued a final decision. According to the TTAB, Vans had shown that Branded – whose business centers on “identifying and acquiring brands” and then licensing them to manufacturers – made “no ‘bona fide use of [the OLD SCHOOL] mark in the ordinary course of trade’” since it acquired the registrations in 2008 (i.e., more than the three year threshold needed to create a rebuttable presumption of abandonment).
The TTAB determined that while the OLD SCHOOL mark appeared on Branded’s marketing website (along with 44 other Branded-owned brands), the site did not boast any e-commerce capabilities. Beyond that, the TTAB found that the only real indication of Branded’s intent to use the OLD SCHOOL mark was a sourcing agreement with an apparel manufacturer to create OLD SCHOOL clothing. However, in lieu of Branded producing any documentation to prove that a formal agreement or relationship existed between itself and the manufacturer, the TTAB stated that the agreement was “too general and too vague to establish [that Branded] had an intent to resume use of the OLD SCHOOL mark in the ordinary course of trade in the reasonably foreseeable future.”
Even assuming that an “‘intent not to resume’ use can be rebutted by proof of a bona fide intent to license,” the TTAB stated that Branded acquired the OLD SCHOOL trademark in 2008 and as of the time of the decision, still owned two registrations for the mark, “more than 10 years later, but the only evidence of [its] efforts to license the mark is [its] posting the mark on its website for possible interested parties and [Branded CEO’s] testimony regarding his vague and general plans regarding the OLD SCHOOL trademark.”
The critical takeaway comes by way of the TTAB drawing a line in terms of use vs. licensing, stating that “‘use’ of a mark means ‘the bona fide use of a mark made in the ordinary course of trade,’” which is distinct from “reserv[ing] a right in the mark until the right deal to license it comes along.” In other words, “Merely because a party has used a mark a long time ago and it could use the mark in the future is not enough to avoid abandonment.”
Having found that Branded “abandoned the OLD SCHOOL trademark for nonuse with no intent to resume use,” the TTAB stated that it “need not decide the claims of abandonment based on an assignment in gross, an invalid assignment, or naked licensing.”
Reflecting on the TTAB’s decision, Taft Stettinius & Hollister’s Kristin Hardy and Salha El-Shwehdi stated in a note that the matter “serves as a cautionary tale for practitioners and brand owners alike. Merely holding onto a mark with no intent to use it, and only an intent to sell or license the goods/services in the future, does not equate to an intent to resume use of the mark.”
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