02-1977 Draeger Oil Co., Inc., et al. v. Uno-Ven Company, et al.

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“With both Unocal and Tosco in effect having abandoned the Union 76 mark in the territory served by these dealers, another oil company could have sought a license from Tosco and could probably have obtained it cheaply, given Tosco’s lack of interest in using the mark in the midwest. None did. Some of the dealers obtained licenses from oil companies selling under other marks, but none obtained a license from an oil company that wanted to license the Union 76 mark. Conceivably, another oil company could have used the Union 76 mark even without a license from Tosco, see Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358, 364-65 (2d Cir. 1959); 2 McCarthy on Trademarks § 17:22, p. 17-44 (2002), though not without legal risk; subsequent use of a federally registered trademark that is still in use by the registrant elsewhere is a minefield, because registration creates a presumption that the registrant is entitled to use the registered mark throughout the nation. See 15 U.S.C. § 1057(b); Coach House Restaurant, Inc. v. Coach & Six Restaurants, Inc., 934 F.2d 1551, 1562 (11th Cir. 1991); 3 McCarthy on Trademarks, supra, § 20:17, p. 20-41; see also 2 id., § 17:22, p. 17-45; 4 id., § 26:32, pp. 26- 51 to 26-53; Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Limited Partnership, 34 F.3d 410, 412- 13 (7th Cir. 1994); Dawn Donut Co. v. Hart’s Food Stores, Inc., supra, 267 F.2d at 362, 365. In any event, no one took that route either.

“It is reasonable as a matter of law for a business to abandon a property that has no value to it, and if the abandonment is lawful it has no duty (unless it has voluntarily assumed one) to compensate suppliers or customers who may be harmed by its decisions. That is all that happened here when Unocal withdrew from the refinery and marketing business.”

Affirmed.

Appeal from the United States District Court for the Eastern District of Wisconsin, Clevert, J., Posner, J.