Property, intangible

Ryan Giles at the Law Vegas Trademark Attorney had the comment that interested me the most, which is the potential for abandonment of the mark. A trademark is abandoned after a period of nonuse with an intent not to resume use – abandonment is presumed after three years of nonuse.

The government seems to be in a pickle though, to the extent it needs to rely on trademark law to stop people from using the trademark. The significance of the mark is that it stands for a motorcycle gang that the government has characterized as outlaw. I assume the government’s position is that it wants to eradicate use of the mark, or in other words, it will cease use of the mark and has no intent that use be resumed. If so, the mark is abandoned and freely available for others to adopt at the moment that becomes true – waiting three years not required.

If the government says it has an intent to resume use through the sale of the mark, query whether it can even be sold in a way that’s of value to the purchaser. To claim priority to the Mongols’ use, the new user would have to “tack” to it, but:

The standard for “tacking,” however, is exceedingly strict: “The marks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked.” In other words, “the previously used mark must be the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark.”

Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1048 (9th Cir. 1999) (citations omitted). The goods or services offered under the mark post-assignment must essentially remain the same:

Inherent to the rules involving the assignment of a trademark is the recognition of protection against consumer deception. Basic to this concept is the proposition that any assignment of a trademark and its goodwill (with or without tangibles assigned) requires the mark itself be used by the assignee on a product having substantially the same characteristics.

PepsiCo, Inc. v. Grapette Co., 416 F.2d 285, 288 (8th Cir.1969). The government may have been willing to sell a trademark for a whorehouse, but that was a legal enterprise. But the government could hardly sell the mark for an outlaw biker gang, the “commercial impression” that the mark currently has. Just fun to think about.