“[f]rom the legislative history it is evident that abandonment under part (b) [subsection 1127(2) ] was principally intended to encompass acts of omission or commission by the registrant which resulted in the mark becoming a generic term”
How later courts described this case
- “[f]rom the legislative history it is evident that abandonment under part (b) [subsection 1127(2) ] was principally intended to encompass acts of omission or commission by the registrant which resulted in the mark becoming a generic term”
- "The Board's view that there is no trademark 'when a mark loses its capacity to point out uniquely the single source or origin of goods,' that is, unless one maintains exclusivity of rights, is...simply 'bad law.'"
- “view that there is no trademark ‘when a mark loses its capacity to point out uniquely the single source of origin of goods’ that is, unless one maintains exclusivity of rights, is ... simply ‘bad law’ ”
- “Without question, distinctiveness can be lost by failing to take action against infringers. If there are numerous products in the marketplace bearing the alleged mark, purchasers may learn to ignore the ‘mark’ as a source identification.”
Written by the judges who cited it.
The opinion
MARKEY, Chief Judge,
dissenting.
The issue of whether CROWN had lost trademark significance was, in my view, tried by the parties. If it weren’t, this court has no business dealing with it.
The board neither mentioned nor applied an “exclusivity” standard. Erecting and destroying that strawman serves no useful purpose. The sole issue is whether WPML is entitled to retain its registration. The board noted the extent of CWC’s use and held WPML’s registration inconsistent therewith. In this case, one who orders CROWN wallpaper cannot possibly be assured of getting or avoiding wallpaper of one expected quality. Hence CROWN has lost all trademark significance. That circumstance is due to WPML’s acts of omission. 15 U.S.C. § 1145 (b). Its registration has in this case become an empty shell. Allowing registrants to retain registrations, while taking no action against years of adverse use of an identical mark on identical goods, demeans and degrades the register. I would affirm.