. 15 U.S.C. § 1065; Perry v. H. J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 471 (5th Cir. 2021) (citing the same). This is important because, "[o]nce a mark becomes incontestable, its federal registration constitutes conclusive evidence of its validity," subject only to the defenses listed under 15 U.S.C. § 1115(b).
Courts define a "trademark maintenance program" as a use intended "merely to reserve a right" of bona fide use in the future. Perry v. H.J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 474 (5th Cir. 2021). Such use does not suffice to establish bona fide use.
The Fifth Circuit, in contrast, "has not adopted the unlawful use doctrine." Perry v. H. J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 475 (5th Cir. 2021).
A mark becomes incontestable if it has been registered and used in commerce for more than five years. Id.; Perry v. H. J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 471 (5th Cir. 2021).
In contrast, the Courts of Appeal for the Fifth and Eleventh Circuits have declined to adopt the doctrine without expressly rejecting it. See Perry v. H.J. Heinz Co. Brands, LLC, 994 F.3d 466 (5th Cir. 2021); FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071, 1087 (11th Cir. 2016). The Court of Appeals for the Sixth Circuit
"While likelihood of confusion is typically a question of fact, summary judgment is proper if the 'record compels the conclusion that the movant is entitled to judgment as a matter of law.' " Xtreme Lashes, 576 F.3d at 227 (citation omitted); see also Springboards, 912 F.3d at 818 (affirming grant of summary judgment because "the great weight of the digits suggests there is no likelihood of confusion."); Perry v. H. J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 473 (5th Cir. 2021) (affirming grant of summary judgment on likelihood of confusion). We address each digit in turn.
Further, even if there has been a valid assignment of rights to Plaintiff, then Plaintiff's failure to conduct any business and its complete nonuse of the Disputed Marks would have abandoned any rights in the Disputed Marks. See Perry v. H. J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 474 (5th Cir. 2021) (“The Lanham Act provides that ‘[a] mark shall be deemed to be “abandoned” . . . [w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances.
In reaching this conclusion, the court is guided by the principle that summary judgment is generally inappropriate when inferences the parties seek to draw deal with questions of motive and intent. Autobahn Imps., L.P. v. Jaguar Land Rover N. Am., L.L.C., 896 F.3d 340, 350 n.23 (5th Cir. 2018); see Perry v. H.J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 476 (5th Cir. 2021) (“[S]ummary judgment is rarely proper when an issue of intent is involved.” (quoting Guillory v. Domtar Indus. Inc., 95 F.3d 1320, 1326 (5th Cir. 1996))); United States ex rel. Taylor-Vick v. Smith, 513 F.3d 228, 231 (5th Cir. 2008) (stating that “we hesitate to grant summary judgment when a case turns on a state of mind determination”). Courts have applied this principle when denying summary judgment to defendants in employment discrimination cases where genuine disputes of material fact exist as to whether the plaintiff was discriminated against on the basis of his or her protected class.
It is true, as Jones points out, that “seemingly de minimis intrastate activities can influence interstate commerce, be regulated by Congress, and thus count as uses in commerce for purposes of the Lanham Act.” Perry v. H. J. Heinz Co. Brands, 994 F.3d 466, 474 (5th Cir. 2021). But this legal concept is of no help to Jones in this case.
This Court's rejection of the unlawful use doctrine is dispositive of the counterclaims at issue, and courts are divided as to whether to adopt the doctrine, signaling an ongoing difference of opinion. Compare CreAgri, Inc. v. USANA Health Seis. Inc., 474 F.3d 626, 630 (9th Cir. 2007) (“[O]nly lawful use in commerce can give rise to trademark priority.”), and United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219,1225 (10th Cir. 2000) (holding that the Lanham Act protects marks “lawfully used in commerce”), with FN Herstal SA v. Clyde Armory Inc., 838 F,3d 1071, 1087 88 (11th Cir. 2016) (declining to adopt the doctrine), Perry v. H. J. Heinz Co. Brands, LL C., 994 F.3d 466, 475 (5th Cir. 2021) (same), Breeze Smoke LLC v. Yalin Enters. Inc., No. 22-cv-1182, 2023 WL 3070893, at *4, *6 (W.D. Mich. Apr. 25, 2023) (same), Moke Am. LLC v. Am. Custom Golf Cars, Inc., No. 20-cv-400, 2022 WL 17477062, at *6-*7 (E.D. Va. Dec. 6, 2022) (same), Hi-Tech Pharms. Inc. v. Dynamic Sports Nutrition, LLC No. 16-CV-949, 2020 WL 10728951, at *6-*8 (N.D.Ga. Jan. 10, 2020) (same).