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Discontinued use of a mark results in abandonment unless the owner of the mark has an intent to resume use in the reasonably foreseeable future. At some point, even a sincere intent to resume use is so vague that it extends beyond the "reasonably foreseeable future." Where that point lies, however, is an intensely factual question that depends on both the nature of the industry or market in which the mark is used and the particular circumstances of the trademark owner.
Plaintiff, Emergency One, Incorporated, d/b/a American Eagle Fire Apparatus Company, Incorporated, and Defendant, American Fireeagle, Limited, were competing manufacturers of fire trucks. Plaintiff alleged that defendant's trademark, a bald eagle superimposed over an American flag, infringed plaintiff's rights in its own mark, also a bald eagle superimposed over an American flag. Defendant defended on the ground that plaintiff had abandoned its mark when it marketed the trucks using a different mark. The issue was ultimately submitted to a jury, which found that plaintiff had not abandoned its trademark. Defendant appealed, arguing that it was entitled to judgment as a matter of law on the issue of abandonment, and that the district court failed to instruct the jury properly on the law of trademark abandonment.
On appeal, the court vacated and remanded for a new trial. The court held that the defendant demonstrated that the plaintiff had discontinued the use of the mark for three years and plaintiff failed to rebut that presumption by producing any evidence of the use required by the Lanham Act. However, plaintiff produced evidence that it intended to resume use of the mark on the trucks. The evidence created a triable issue of fact, precluding judgment as a matter of law. Anent the second issue, the court held the trial court committed prejudicial error by failing to instruct the jury that in order to avoid abandonment a trademark owner who discontinued use of the mark must have an intent to resume use in the reasonably foreseeable future and that the type of use that was relevant to determining whether a trademark owner has discontinued use was use in the course of trade in a particular good.