Finding No Intent To Abandon, TTAB Holds Rights In CHICLETS Stick

In Retrobrands USA LLC v. Intercontinental Great Brands LLC, the Trademark Trial and Appeal Board (TTAB) found that Retrobrands failed to prove that the well-known trademark CHICLETS for chewing gum had been abandoned.  The TTAB also found that Intercontinental affirmatively established intent to resume use.  The non-precedential decision illustrates the challenges of proving nonuse abandonment, and specifically, a registrant's intent not to resume use.  It also serves as a guide for legacy brand owners to avoid abandonment of valuable trademarks.

Abandonment

The two elements of a nonuse abandonment claim are (1) nonuse of the mark and (2) intent not to resume use.  A showing of three consecutive years of nonuse creates a rebuttable presumption of abandonment and shifts the burden to the owner to prove use of the mark or intent to resume use.  If the challenger cannot establish three years of nonuse, it has the difficult task of proving intent not to resume use.