Comment by ameliaquining
3 days ago
Has any court ever ruled that a trademark was abandoned, merely on the grounds that its owners didn't try to prosecute a borderline infringement case?
3 days ago
Has any court ever ruled that a trademark was abandoned, merely on the grounds that its owners didn't try to prosecute a borderline infringement case?
This is a dilution not abandonment issue.
Courts will look at the level of systematic tolerance. If you have a history of vigorous enforcement, it will be harder to argue in the future that a borderline dilution should be allowed.
If you allow borderline dilution, the court is going to consider what you have let other people get away with in the past.
It’s a bit of a catch 22
I would still be interested in a real case where a trademark owner ignored a borderline case and this later resulted in an adverse ruling when a more concrete interest was at stake.
Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252 (5th Cir. 1980) The record showed a history of extensive third‑party “Domino” uses (including other food and grocery products). That crowded field made Amstar’s DOMINO relatively weak outside sugar, and Domino’s Pizza prevailed. Link: https://law.justia.com/cases/federal/appellate-courts/F2/615...