Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd.

Brief Fact Summary.

Sed Non Olet Denarius, Ltd. (SNOD) (Defendant) was sued by Major League Baseball Properties, Inc. (Plaintiff) and the Los Angeles Dodgers (Plaintiff) for infringement on their trademarks and unfairly competing with them by opening restaurants in Brooklyn named “The Brooklyn Dodger Sports Bar and Restaurant.

Synopsis of Rule of Law.

Under the Lanham Act, abandonment requires both nonuse and intent not to resume use.

Facts.

In 1988, Sed Non Olet Denarius, Ltd (SNOD) (Defendant) started a restaurant business under the name “The Brooklyn Dodger Sports Bar and Restaurant.â€Â  Major League Baseball Properties, Inc. (Properties) (Plaintiff) and the Los Angeles Dodgers (Los Angeles) (Plaintiff) alleged in their complaint an infringement of their trademarks, a wrongful appropriation of their trademarks, unfair competition and the intentional use of a counterfeit mark.  Defendant counterclaimed for the cancellation of various trademark registrations for “Brooklyn Dodgers†filed by Los Angeles (Plaintiff) after Defendant’s application in 1988 to register the “Brooklyn Dodgers†servicemark.

Issue.

Under the Lanham Act, does abandonment require both nonuse and intent not to resume use?

Held.

(Motley, J.)  Yes.  Under the Lanham Act, abandonment requires both nonuse and intent not to resume use.  The evidence presented at trial established that between 1958, when the Dodgers baseball team left Brooklyn for Los Angeles, and 1981 Los Angeles (Plaintiff) made no commercial trademark use in any way of any “Brooklyn Dodgers†mark.  The “Brooklyn Dodgers†name had acquired secondary meaning in New York in the early part of the century, before 1958.  Here, in order to maintain use of the mark, Los Angeles (Plaintiff) would have had to continue to use “Brooklyn Dodgers†as the name of its baseball team.  Under the law, warehousing is not permitted.  Los Angeles (Plaintiff) tried to “warehouse†this trademark by using the name “Brooklyn Dodgers†strictly in conjunction with items of historical interest after 1958.  Los Angeles’s (Plaintiff) failure to use the “Brooklyn Dodgers†trademark between 1958 and 1981 constitutes abandonment of the trademark.  Once prima facie abandonment has been proven, the trademark registrants, Los Angeles (Plaintiff), must prove an intent to resume use of the trademark to prevail.  Los Angeles (Plaintiff) has in no way provided evidence of an intent to resume commercial use of the “Brooklyn Dodgers†mark within two years after leaving Brooklyn in 1958 or at any time in the ensuing quarter century.  Los Angeles’s (Plaintiff) resumed limited use of the trademark on clothing and novelty items does not preclude SNOD’s (Defendant) use of the mark in their restaurant business in Brooklyn, where the idea of trading on any “good will†is nearly laughable since the 1958 departure of the Dodgers was accompanied by monumental hard feelings throughout the borough of Brooklyn.  Motion denied.

Discussion.

In 1994 the Lanham Act was amended.  As of January 1, 1996, the presumptive abandonment period is three years instead of two years.  The trademark rights are mainly intended to avoid confusion in the minds of the public.