Exxon Corp. v. Humble Expl. Co. - 695 F.2d 96 (5th Cir. 1983)

Rule:

The burden of proof is on the party claiming abandonment, but when a prima facie case of trademark abandonment exists because of nonuse of the mark for over two consecutive years, the owner of the mark has the burden to demonstrate that circumstances do not justify the inference of intent not to resume use. 

Facts:

Humble Exploration Company, Inc. challenged an order enjoining its use of "Humble" as a trade name. The district court held that the limited use of a famous trademark for protective purposes was a use sufficient to preclude abandonment under the common law and 15 U.S.C.S. § 1127 of the Lanham Act. 

Issue:

Did the district court err in finding that Exxon Company, U.S.A. had not abandoned the use of the trademark HUMBLE?

Answer:

Yes

Conclusion:

The court found that the limited arranged sales of HUMBLE products as part of Exxon's trademark maintenance program are insufficient uses to avoid prima facie abandonment under 15 U.S.C. § 1127.  Accordingly, the court affirmed in part and reversed in part he district court's judgment and remanded the action for a determination of Exxon's intent to resume use.