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).
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.”).
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.