[E-trademarks] Abandonment by failure to police or limited policing?

[Jessica R. Friedman]

  *   Are there any cases in which a company is held to have actually abandoned its rights in a mark because the company did not challenge a mark that conceivably might have created a likelihood of confusion on paper but not in real life?


     *   My client’s mark is (making this up) HAPPY APPLES for dried apple snacks, with a disclaimer of APPLES. X is applying to register ORCHARD HAPPY APPLES for fresh apples. Although many companies, e.g., Trader Joe’s, Harry & David, sell both dried and fresh fruit under the same mark, it seems clear from X’s site that X is a fruit grower that is only going to sell fresh apples, so my client does not think that there is necessarily a significant likelihood of confusion.


     *   The PTO has cited my client’s registration against this application, but the applicant is challenging the refusal.


     *   If the application goes through, and my client doesn’t challenge it, I am concerned that one day, when my client wants to challenge someone else for the use of HAPPY APPLES or something close to that, if the party they are opposing finds out that they did not challenge this application and use, that party will be able to claim that my client relinquished the exclusive right to HAPPY APPLES.

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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