Intellectual Property – trademarks — abandonment

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U.S. Court of Appeals for the Seventh Circuit

Civil

Intellectual Property – trademarks — abandonment

Where the plaintiff had not used a trademark for five years, it was abandoned.

“Specht’s argument does not address the district court’s sound conclusion that Google became the senior user of the Android mark when it used the mark in commerce in November 2007. By then, the Android mark lay abandoned. Once a mark is abandoned, it returns to the public domain, and may be appropriated anew. See Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd. P’Ship, 34 F.3d 410, 412 (7th Cir. 1994); ITC Ltd., 482 F.3d at 147. By adopting the abandoned mark first, Google became the senior user, entitled to assert rights to the Android mark against the world. Its use since November 2007 has been uninterrupted and continuous. That is enough to warrant trademark protection. See Zazu Designs, 979 F.2d at 503; Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260, 1265 (5th Cir. 1975) (“even a single use in trade may sustain trademark rights if followed by continuous commercial utilization”); see also Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1194–95 (11th Cir. 2001) (release of software to end users is use in commerce even though no sale was made).”

Affirmed.

11-3317 Specht v. Google, Inc.

Appeal from the United States District Court for the Northern District of Illinois, Leinenweber, J., Rovner, J.