When technology startups and entrepreneurs are thinking about trademark adoption and selection, an issue that may arise involves brands that have technically been discontinued, and whether the trademark has been legally abandoned, such as whether the Ford Bronco® trademark was legally abandoned. In light of Ford Motor Co.’s announcement that they will be releasing a new Bronco, after over 20 years of discontinued production, we examine whether Ford ever legally abandoned the BRONCO brand, and if it is, or was, up for grabs by a competitor.
Ford Motor Company’s Registered Trademark Rights in Connection with Bronco® Models
Ford has 28 federal trademark records connected to the BRONCO brand with priority claimed since 1964.
The BRONCO brand has notoriety worldwide but Ford halted manufacturing of the model in 1996.
Among other things, its most infamous moment happened in June 1994, when OJ Simpson led police on a low-speed chase through Los Angeles in a white 1993 Ford Bronco after being charged with the murder of his ex-wife Nicole Brown Simpson and her friend Ronald Goldman.
The legal question then presented is whether Ford legally abandoned its BRONCO trademark by discontinuing manufacture of the model in 1996.
Did Ford Motor Company Abandon the BRONCO Trademark?
A legal presumption of trademark abandonment requires three (3) years of discontinued use without an intent to resume. As such, one could potentially assume that Ford abandoned its BRONCO trademark since it stopped production for twenty-four (24) years—well beyond the required period of three (3) years under U.S. trademark law.
However, case law supports the opposite conclusion.
Under the law, the trademark owners must not only discontinue use but also intend not to resume use. There’s little evidence that Ford Motor Company intended to abandon the BRONCO brand. For example, the company never denounced the brand, or publicly announced its intention to abandon the brand name, like the formerly-named Washington Redskins did in July 2020 when they announced a formal re-branding and intention not to resume use of the term REDSKINS in connection with football exhibition games, merchandising, and related trademark rights.
So there is no intent here, and this weighs heavily against the finding of legal abandonment under law.
In cases involving trademark abandonment, the intent of the trademark owner’s intent is a critical factor, as well as the extent of time that the mark has been out of market. When trademark owners, entrepreneurs, and startup ventures are evaluating a potentially abandoned trademark and considering it for use and adoption as their own. Failure to do so may result in inadvertently adopting a trademark that is still valid and legally protected under the law, and lead to receiving a cease and desist letter or being sued for federal trademark infringement. Consultation with an experienced trademark litigation attorney is highly recommended before adopting and selecting any brand name, particularly one that may or may not have been abandoned.
David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal. Office: Ph: 310-751-0181; email@example.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2019. All rights reserved.