Court finds no abandonment of ATLA mark by American Association for Justice

The American Association for Justice (“AAJ”) (formerly the Association of Trial Lawyers of America) won a signfiicant victory in its trademark infringement lawsuit against The American Trial Lawyers Association (“TheATLA”) (previous blog posts here and here) when the court found that the AAJ had not abandoned its trademark rights to the ATLA mark despite having intentionally made the decision to change its name from ATLA to AAJ. See American Association for Justice v. The American Trial Lawyers Association et al, Case No. 07-cv-04626, 2010 U.S. Dist. LEXIS 25325 (D. Minn. March 18, 2010). Law.com article here.

TheATLA tried to argue that AAJ abandoned its rights to ATLA when it made the decision to change its name. In ruling against TheATLA, the court noted the following:

[A] prospective intent to abandon a mark does not establish abandonment. Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 937 (9th Cir. 2006). Rather, “abandonment requires complete cessation or discontinuance of trademark use.” Id. at 938. A single bona fide use of a mark “‘is sufficient against a claim of abandonment.’” Id. (quoting Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 804 (9th Cir. 1970)). If use of the trademark is not actually discontinued, “the intent not to resume use prong of abandonment does not come into play.” Id. at 937-38. Because abandonment constitutes a forfeiture of a property right, it “must be strictly proved” by the party seeking abandonment. See Iowa Health Sys., Inc. v. Trinity Health Corp., 177 F. Supp. 2d 897, 918 (N.D. Iowa 2001) (quotation marks omitted).

The court found that after the official name change in December 2006, AAJ continued to identify itself as “formerly the Association of Trial Lawyers of America” on its website, in advertisements, and mailings to prospective members:

Such use of the designation “formerly” to capitalize on the goodwill and source identification of the marks constitutes bona fide use. Cf. First Fed. Sav. & Loan Ass’n of Council Bluffs v. First Fed. Sav. and Loan Ass’n of Lincoln, 929 F.2d 382, 385 (8th Cir. 1991) (“The new savings and loan plans to capitalize on First Federal Council Bluffs’ good name by advertising itself as the ‘former First Federal.’ This [may] support a continuation of the injunction [prohibiting the defendant’s use of First Federal] for as long as the identification with the former institution is used by the new owners.”); Alliant Energy Corp. v. Alltel Corp., 344 F. Supp. 2d 1176, 1187 (S.D. Iowa 2004) (“Despite a name change, a trademark may still possess significant goodwill and remain a valuable asset to a company. . . . Even in cases such as the present one, where there are extensive efforts to notify the public of the name change, there is still the possibility that goodwill remains in the marks.”).

The court found this evidence alone warranted summary judgment in favor of AAJ and against TheATLA on TheATLA’s affirmative defense of abandonment. The court further reinforced its decision by noting that AAJ had continued to license ATLA to at least one licensee who has continuously used the mark, several publications continued to be published using the ATLA mark, and AAJ maintained the www.atla.org and www.atlanet.org websites to direct users to the organization’s new website (which capitalized on the source identification and goodwill of the ATLA mark by directing those individuals who were drawn to the website by the ATLA mark to the new AAJ website).

With the exception of the issue of abandonment, the court denied the summary judgment motions filed by both sides. The case now moves on to trial.