closing of brewery was excusable because it “was the result of a 88 Applicant’s Brief 77 TTABVUE 24-25 (redacted); 76 TTABVUE 24-25 (confidential). - 29 - Opposition No. 91240240 (parent) Opposition No. 91243700 strike and not a voluntary act by [the mark owner]”
How later courts described this case
- closing of brewery was excusable because it “was the result of a 88 Applicant’s Brief 77 TTABVUE 24-25 (redacted); 76 TTABVUE 24-25 (confidential). - 29 - Opposition No. 91240240 (parent) Opposition No. 91243700 strike and not a voluntary act by [the mark owner]”
- finding no problem with assigning beer mark to one business entity and brewery assets to another
- court determined that tangible assets need not be included in assignment of trademark with business goodwill in a case involving separate agreements to sell trademark and physical assets to different buyers
- tangible assets need not be included in assignment of trademark with goodwill
Written by the judges who cited it.
The opinion
Almond, Judge^
dissenting.
I cannot agree that the prima facie case of abandonment that arises from non-use for more than two consecutive years (15 USC 1127) has been overcome. The majority concludes that the activity of Cook and Hulmán directed to maintenance of the brewery and the refusal for several years to sell the rights to the mark separate from the brewery shows an intent to resume and rebuts the statutory presumption of abandonment. I disagree.
It seems to me that the most the activities of Cook and Hulmán during the period from 1955 through 1963 demonstrate is that they, as owners of the brewery, were following sound business judgment in an effort to recover the maximum amount for its sale. For example, the maintenance work on the plant over the years can be explained as due wholly to the realization that more could be realized from the sale of a .properly maintained plant than from one that had been allowed to deteriorate. As the record shows, that work did not keep the brewery in condition to be operated competitively since it would have required *1180 substantial investment for new bottling equipment, which, neither Cook nor Hulmán saw fit to make. Similarly, offering the brewery for sale as a package only was clearly a decision based on the recognition of a possibility that a potential purchaser might pay more for the entire assets including the trade name and trademark rights than the tangible and intangible assets would bring separately. That decision very likely involved a sound business risk to protect the more valuable physical assets, but as an indication of an intent to resume use of the “COOK’S GOLDBLUME” trademark, it is too speculative to merit serious consideration. Only the purchaser of the package, unknown and in fact never found, could make a decision on the matter of resumption of use, since the record does not show that either Cook or Hulmán ever took any action directed toward resuming production of beer themselves. The sales of the options, which were never exercised, clearly add nothing significant on the question of Cook’s or Hulman’s intentions with respect to the mark in issue.
Under the circumstances, I agree with the board that the implication of intent not to resume has not been overcome and the prima facie abandonment, arising under the statute from non-use for more than eight years, must stand. The mark had thus become abandoned before the assignment from Hulmán to appellant and there were no rights remaining in it to be transferred. Therefore, I would affirm the decision of the board.