A Fight To The Finish

• Jurisdiction: United States,Federal
• Law Firm: Goldman Sloan Nash & Haber LLP
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Advertising, Marketing & Branding
• Author: Mr John McKeown
• Published date: 19 May 2023

A decision of the Federal Court deals with abandonment of registered trademark as well as bad faith. Travel Leaders Group, LLC v. 2042923 Ontario Inc. 2023 FC 319

The Facts

In late 2004 the defendant decided to offer travel agency services in association with the trademark TRAVEL LEADERS. The defendant concurrently applied for the business licenses and obtained the domain name . The plaintiff, a US company, first adopted the trademark TRAVELEADERS in 2001 in the U.S. and filed for registration on April 19, 2005. A registration was obtained on November 14, 2006. The US Registration was amended to two words, TRAVEL LEADERS, on September 11, 2008.The plaintiff and its predecessors have used the trade name and trademark TRAVEL LEADERS in the US since 2008.

The plaintiff applied for the TRAVEL LEADERS mark in Canada in August of 2008. The defendant successfully opposed the application and then applied for the trademark TRAVEL LEADERS. A registration was obtained without opposition.

The plaintiff attempted to negotiate to purchase the plaintiff's registered trademark without success. The defendant posted a public advertisement that said it would sell its registrations for $80 million USD.

The plaintiff then applied for the trademarks TRAVEL LEADERS NETWORK, TL NETWORK and TL NETWORK & Design. The defendant opposed both TL NETWORK applications unsuccessfully.

The plaintiff's business has been successful, but the defendant's business failed.

The plaintiff brought an action in the Federal Court for a declaration that the defendant's trademark registration for the trademark TRAVEL LEADERS was invalid on the grounds that the registration had been abandoned and the registration was registered in bad faith by the defendant, among other grounds. In addition, it was alleged that the defendant engaged in passing off contrary to paragraph 7(b) of the Act.

Abandonment

Paragraph 18(1)(c) of the Trademarks Act provides that the registration of a trademark is invalid if the trademark has been abandoned.

As the party alleging invalidity, the plaintiff bore the onus of proving, on a balance of probabilities, that the registration for the TRAVEL LEADERS trademark was invalid. The relevant date for assessing abandonment is the date the plaintiff filed the statement of claim seeking expungement.

In order to show abandonment the plaintiff must establish (1) nonuse in Canada of the trademark, and (2) an intention to abandon the trademark. An intention to abandon may be inferred from...