The MR. COFFEE mark became an American icon through a classic advertising campaign featuring baseball great Joe DiMaggio. Recently, a team of Foley & Lardner IP litigators in Washington, D.C. scored home runs in both Maryland and Virginia to protect the MR. COFFEE mark, now owned by Sunbeam Products, Inc. The team won summary judgment in Maryland and a trial verdict in Virginia against a Canadian company and its sole shareholder, preventing them from exploiting MR. COFFEE. The Foley team consisted of Brian McNamara, Lisa Mankofsky, Geoff McNutt and Vineeta Bathia, with help from Max Welsh, Akita Adkins and Lucia Beal.
The case began years ago with Mister Coffee & Services, Inc., a company allegedly related to the Maryland and Virginia defendants. That company used the MISTER COFFEE mark (note spelling) and opposed trademark registration of MR. COFFEE for certain coffee goods and services in Canada. Although the Canadian trademark office sustained the opposition, its opinion noted that actual use of MISTER COFFEE might still violate Canadian rights in MR. COFFEE but deferred final ruling to the courts. MR. COFFEE then sued in Canada and Sunbeam inherited the suit when it acquired the brand in 1998. During settlement negotiations in 2002, Robert Hale, negotiating on behalf of Mister Coffee & Services, Inc., demanded a large settlement from Sunbeam, claiming rights in the United States, which he refused to identify.
At this point, the Foley team stepped in. The Foley lawyers discovered that another Canadian company owned by Mr. Hale, Services, Inc. of Manassas, Virginia. That Virginia company sold its coffee business in 1993 to a yet another third party, although the Virginia company continued to exist. The problem for 148977 Canada, Inc. was that it did not acquire the registrations until 2001 – eight years after the Virginia company sold its coffee business.
In early 2002, the Canadian case settled, but the Maryland and Virginia registrations remained a threat to MR. COFFEE. Since the marks had been unused for eight years, the Foley team filed a declaratory judgment action in Maryland and an action to cancel the registrations before the Virginia State Corporation Commission. To avoid dispute about who first used the marks over 30 years ago, the Foley team sought to cancel the state registrations due to abandonment. The team argued the marks had deliberately not been used for eight years, were abandoned by the Virginia company, and the Canadian company thus could acquire no rights.
The Maryland and Virginia courts used different approaches but both found abandonment. The Maryland court noted that although modern principles of trademark law suggest that non-use of a mark with an intent not to resume use is an appropriate standard for abandonment, the Maryland legislature had not spoken on the issue. Applying a stricter standard articulated in case law over 60 years ago, the court found that, in 1993 the Virginia company who sold its coffee business had abandoned the MISTER COFFEE mark. Granting summary judgment to Sunbeam, the Maryland court noted that the Virginia company’s conduct demonstrated intent to abandon the mark, notwithstanding the absence of a statement specifically articulating intent to abandon or even verbal statements that there was no intent to abandon. Defendants are appealing.
In Virginia, the court recognized the legislature’s amendment of the state’s trademark statute in 1998 meant a cause of action accrued under the statute. Under the Virginia statute, non-use with an intent not to resume is abandonment and non-use for a period of three years triggers a presumption of intent not to resume use. Applying those standards, the court found at trial that the evidence demonstrated intent to abandon. The trial court’s decision is now before the full State Corporation Commission for a final ruling.
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