Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd.
817 F. Supp. 1103 (1993)
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Rule of Law:
When a trademark owner discontinues all commercial use of a mark with an intent not to resume, the mark is deemed abandoned. A subsequent resumption of use does not retroactively cure the abandonment; it only establishes new, limited rights from the date of resumption, which may not be sufficient to enjoin a junior user operating in a different market.
Facts:
- A professional baseball team known as the 'Brooklyn Dodgers,' owned by the Brooklyn National League Baseball Club, Inc., played in Brooklyn, New York until 1958.
- In 1958, the team relocated to Los Angeles, California, and its corporate owner changed its name to Los Angeles Dodgers, Inc., thereafter playing as the 'Los Angeles Dodgers'.
- Between 1958 and 1981, Los Angeles Dodgers, Inc. and its licensing agent, Major League Baseball Properties, Inc., made no commercial trademark use of the 'Brooklyn Dodgers' name.
- Beginning in 1981, plaintiffs began to license the 'Brooklyn Dodgers' mark for use on merchandise such as apparel, sportswear, and novelty items.
- In 1987, individual defendants David Senatore, Richard Picardi, and Kevin Boyle decided to open a restaurant in Brooklyn with themes of sports and local nostalgia.
- After commissioning trademark searches which revealed no federal registration for a 'Brooklyn Dodger' mark, the individual defendants chose that name for their establishment.
- In March 1988, the defendants opened their first establishment, 'The Brooklyn Dodger Sports Bar and Restaurant,' which featured a logo with script and color similar to the former baseball team's.
- The restaurant's decor heavily featured baseball memorabilia and references to the old Brooklyn Dodgers team to create a nostalgic atmosphere.
Procedural Posture:
- Major League Baseball Properties, Inc. and Los Angeles Dodgers, Inc. filed suit against Sed Non Olet Denarius, Ltd. and other corporate and individual defendants in the U.S. District Court for the Southern District of New York.
- Plaintiffs alleged federal and common law trademark infringement and sought permanent injunctive relief, an accounting of profits, and damages.
- Defendants answered, denying infringement and asserting the affirmative defenses of abandonment and laches, and also counterclaimed for cancellation of plaintiffs' trademark registrations.
- Plaintiffs filed a motion for a preliminary injunction and summary judgment.
- The district court granted the preliminary injunction with respect to a new third restaurant opened by defendants, but denied the motion for summary judgment.
- Plaintiffs withdrew their claims for legal damages, proceeding to trial on their equitable claims only.
- A bench trial was conducted by the district court.
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Issue:
Does a professional baseball team that ceases all commercial use of its geographically specific name for over two decades thereby abandon its trademark rights in that name, precluding it from enjoining a good-faith junior user from using a similar name for a local restaurant in the team's former city?
Opinions:
Majority - Motley, District Judge
Yes. A professional baseball team abandons its trademark rights in a former geographically specific name when it discontinues all commercial use for over two decades with an intent not to resume, and its subsequent, limited resumption of use does not entitle it to enjoin a good-faith user of a similar name for a local restaurant. The court determined that under the Lanham Act, abandonment requires both nonuse and intent not to resume use. Plaintiffs' 23-year period of nonuse (1958-1981) established a prima facie case of abandonment. The team's physical relocation and immediate adoption of the 'Los Angeles Dodgers' name was clear evidence of an intent not to resume use of the 'Brooklyn Dodgers' mark. Occasional, sporadic, or non-commercial historical references do not constitute 'use in commerce' sufficient to prevent abandonment. The court, following the reasoning in Ambrit, Inc. v. Kraft, Inc., held that the plaintiffs' resumption of use in 1981 did not cure the prior abandonment but instead created new rights, limited to the new scope of use (merchandise and novelties). Because defendants' restaurant services are in a separate market and were adopted in good faith, plaintiffs cannot extend their newly acquired, limited rights to enjoin defendants' use. The court also analyzed the Polaroid factors for likelihood of confusion and found for the defendants, emphasizing the lack of product proximity, the unlikelihood of plaintiffs 'bridging the gap' into the restaurant business, the absence of actual confusion, and the defendants' good faith.
Analysis:
This case is a landmark decision on the principle of trademark abandonment through nonuse. It establishes that even an extremely famous and culturally significant trademark can be lost if not actively maintained in commerce. The ruling clarifies that rights in an abandoned mark are not revived by a later resumption of use; rather, the resumption creates a new, and potentially more limited, set of rights from that point forward. This precedent solidifies the 'use it or lose it' nature of trademark law, allowing junior users to adopt marks that have been abandoned, particularly for use in different commercial fields.
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