Property, intangible

a blog about ownership of intellectual property rights and its licensing

Don’t Expressly Abandoned a Trademark You Allege is Infringed

I don’t usually write about abandonment, but Commerce Bancorp LLC v. Hill is a good teaching moment – or maybe a not, since it looks like Commerce Bancorp dodged a bullet.  But it only survived summary judgment in a court that sets a low bar for finding a genuine issue of material fact.

The facts here are a litigator’s nightmare.  In March, 2008 Commerce Bank was acquired by TD Bank Financial Group.  In May, 2008 (March, according to the court, May, according to TD Bank), various subsidiaries of the TD family and the Commerce family merged and were renamed TD Bank, N.A.  The merged subs then announced in July, 2008 that they would begin branding their retail operations under a new name, “TD Bank, America’s Most Convenient Bank.”  The original name was to be “TD Commerce Bank,” but, according to a TD Bank press release, they couldn’t use the name because of a legal challenge – a federal court had “provisionally prevented” the company from using the “TD Commerce Bank” name on signage and marketing materials in some Massachusetts counties.  Some PACER investigation shows that Commerce Bank & Trust Company was the plaintiff – here’s the preliminary injunction and here’s the agreed-to permanent injunction.  The Commerce Bancorp court says that the rebranding was completed by September 27, 2009.

Here are the steps TD Bank took in its rebranding:

  • issued a press release announcing the name change;
  • invested millions of dollars in a re-branding campaign;
  • did so because it was legally unable to use “Commerce” in parts of Massachusetts;
  • gave up the Commerce Bank domain name (;
  • voluntarily surrendered “the” federal registration for COMMERCE (I couldn’t find any registration expressly abandoned after March 31, 2008 or cancelled under Section 8 on the date the court gives);
  • abandoned applications to register various “COMMERCE” marks;
  • voluntarily withdrew oppositions against companies using other COMMERCE marks.

As we all know, there are two elements of an abandonment claim, cessation of use and an intent not to resume use. The court had no problem finding cessation of use; while there was some continued internal use of the COMMERCE brand and some artifacts of the brand in some structural aspects of the banks, there was no a bona fide use in the ordinary course of trade.  But the court gave TD Bank a gift when it decided that, for purposes of summary judgment, it couldn’t say for sure that TD Bank had an intent not to resume use of the Commerce mark “as a matter of law by clear and convincing evidence.” 

In this case, the short period of time that passed between alleged abandonment and alleged infringement weighs heavily against summary judgment. Hill’s alleged infringement through the BAI Presentations came less than four month after Plaintiffs’ press-release announcing its name change. Moreover, it is not clear whether re-branding was complete at the time of the BAI Presentations, and if it was not, what level of completion such re-branding had achieved in the eyes of the consuming public. Of course, the Court does not know when all of the other presentations that round-out the subject of this lawsuit were allegedly made by Hill, and this uncertainty also counsels against finding abandonment as a matter of law.

Moreover, although Plaintiffs’ voluntary cancellation of the “COMMERCE” mark might in different circumstances indicate an intent not to resume use, this particular surrender did not occur until well after the alleged BAI infringements. Thus, it remains an open question whether Plaintiffs intended to abandon the “COMMERCE” mark at the time of the alleged infringement and whether Plaintiffs intended to abandon the other Commerce Marks at all. Plaintiffs suggest that they have not yet decided whether to reuse the non-surrendered Commerce Marks as part of future marketing schemes. Given the short period of time that passed between re-branding and alleged infringement, this lack of certainty (if true) is understandable, and consequently it would be a mistake for this Court to interpret such indecision as clear and convincing evidence that Plaintiffs have no intent to resume use of the Commerce Marks and are instead attempting to hoard them for the sole purpose of excluding Hill.

In Commerce Bank’s eyes, Hill’s wrong was using the trademarks to suggest he was still associated with Commerce Bank when he was not.  (There’s also a nominative fair use defense in the case which the court found had some merit, although not enough to grant Hill summary judgment.)  So I don’t know that it’s an incorrect outcome to allow the claim to proceed, but I suggest that it’s a rare case where this kind of evidence of abandonment wouldn’t be good enough for summary judgment.

Commerce Bancorp, LLC v. Hill, Civ. No. 08-5628 (D.N.J. June 18, 2010).  Standing issue in case previously blogged here.

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