Saratoga Vichy Spring Co., Inc. v. Orin Lehman, Commissioner of Parks and Recreation of the the State of New York and Waters of Saratoga Springs, Inc.

bоttling opera- tion for the State’s OAKES, VAN Before GRAAFEILAND venture, tion, losing which had become a NEWMAN, Judges. Circuit private pro- and to lease the facilities to a When Vichy ducer.1 learned NEWMAN, Judge: Circuit State, decision, this wrote to the indicat- appeal primarily This concerns the issue license, obtaining the ing an interest in in the of timeliness of a trademark suit stating: strongly that the water “We feel of a claim of trademark abandon- context our Spa compliments at the bottled [sic] ment. Saratoga waters products in the sale of all However, the marketplаce.” in Facts for- litigation with its became involved in produces a Saratoga Vichy Spring Co. was unable to obtain a mer distributor and waters; mineral variety of soft drinks and it closed down During period, this licensee. products, one of its mineral water from a its em- bottling operation and dismissed N.Y., Saratoga Springs, has been spring in ployees, application for but it also filed an 1876, always under produced since almost registration “Saratoga the trademark “Saratoga Vichy.” This name name Department Geyser” with the New York Patent and registered with the U.S. litigation Thе with the distributor State. 1920, Trademark and continues to Office 1976, and, later, ended in years two protected registration. New under satisfactory agree- reached a license bottling mineral water began York State Saratoga Springs, ment with Waters of Saratoga Springs from area in 1910 Inc.,2 which announced its intention to sell names, variety under a one of which is product “Saratoga Gey- under the name Between 1910 “Saratoga Geyser.” ser.” present suit in commencement time, approximately At the same litigation there was no between the two revamр its min- However, ago Saratoga 40 nearly Vichy bottlers. decided abandoning quaint bring product, did suit in the eral South- water thereafter, Shortly major impetus it was 2. discovered that the A this decision was the 1970-71, well, discovery, Geyser that several of New from which the State’s drawn, products par- Geyser” also York State’s mineral water were water was mineral enough radioactive, tially although surprisingly, radioactive. Not this had a somewhat impact product As a result somewhat detrimental on the sale of unsalable. render the this ga renegotiated discovery, products, of Sarato- as the State and Waters these which had been marketed license. health items. their F.Supp. (E.D.N.Y.1978); 880-82 trendy new one developing image and Casper the dramatic success v. Wright, Inc. from John order to benefit (E.D.Pa.1976), in the United water aff’d in of Perrier mineral 322-23 F.Supp. Donsco, the name company changed damages, States. sub nom. part, rev’d as to “Saratoga Vichy” “Sar- products from Cir. Casper Corp., v. F.2d Inc. dress, and atoga,” adopted a new trade House, Varsity v. 1978); Inc. Varsity million dollar advertis- on a one embarked (E.D.N.Y. F.Supp. House, ing campaign. law); 1974) York trademark (applying New Inns, Inn, Holiday v. Holiday Inc. learned when (D.S.C.1973), aff’d granted had been that the license 1974); mem., (4th Abbey Saratoga, buy offered Smith, $50,000. Directors, Inc. Misc.2d “Saratoga Geyser” Funeral aff’d (Sup.Ct.1960), refused. This offer was 204 N.Y.S.2d against both Waters suit brought then N.Y.S.2d 527 mem., 14 A.D.2d York, of New however, and the State means, (1961). All this of trade- claiming infringement its federal which required, of is balancing equities mark, designa- and false competition unfair principle of any be the case would the trademark origin tion of under federal view, Judge Wein- Adopting this equity. act, under New infringement and dilution following rule: “Dе- the feld has offered law, competi- and unfair York trademark must proof in its laches defense fendant’s New York. law of tion under common knowledge had of de- plaintiff show that of had It that its use argued marks, plaintiff use of its that fendant’s acquired secondary meaning, that State taking action with inexcusably delayed rights may have had abandoned thereto, that will be and defendant respect of mark, and the actions its own that inequit- by permitting plaintiff prejudiced according of were unfair Waters this time.” Cu- to assert its ably both state and federal standards. Brands, Cigar Upmаnn N.V. v. Interna- ban argued that was defendants the suit barred 1090, (S.D.N. tional, Inc., 1096 457 laches, not mark was aban- by that omitted). Y.1978) (footnotes doned, present use and that was defined, defense, as thus The laches unfair. all causes for asserted clearly available for the Northern Dis- The District Court act, see Carl action: the federal (James Foley, trict of New York T. Chief Jena, 433 Stiftung Zeiss v. VEB Carl Zeiss Judge) granted summary judgment denied, 1970), cert. 686, (2d Cir. F.2d defendants.3 We We hold that affirm. 2205, 905, 29 L.Ed.2d 680 403 U.S. 91 S.Ct. laches, by as Saratoga Vichy’s suit is barred facts); Polaroid (1971) (defense rejected on grounds law, alleged as to all mattеr F.2d Corp., 287 Electronics Corp. v. Polarad relief. 820, Cir.) denied, U.S. 82 492 368 cert. (1961); 25 Emerson 7 L.Ed.2d S.Ct. Discussion Mfg. Radio & Pho Electric Co. v. Emerson The Laches Defense (2d Cir.) cert. Corp., nograph 105 908 84 L.Ed. denied, 60 308 S.Ct. delay” will is often said that It “mere of unfair suit, (1939), New York law that not, itself, but by abar Polaroid, Hershey supra; estoppel, competition, see element must be some Hershey Creamery Corp., v. by such as the defendant. Ice Cream Co. reliance Bowl, Inc., (Sup.Ct.1957), Farms, 158 N.Y.S.2d 654 Johanna Inc. Misc.2d Citrus laches, by State barred that had not as a The District found that matter Court mark, requirements “Saratoga,” plain- mark abandoned its that law the used as tiff, secondary meaning, had not been relief under the state statutes had not likelihood of confusion too insubstantial met. preclude summary judgment, prior to 1971 was barred mem., 5 A.D.2d N.Y.S.2d aff’d during peri- Corp. bring v. Renotex failure to suit Vichy’s Process (1958); Renofab claims, It how- (Sup.Ct.1970), 1910 and 1971.4 od between N.Y.S.2d effectively ever, that after 1971 the State York trademark and anti-dilution the New closing bottling Polaroid, Rainbow statutes, supra; its mark see abandoned its use of the Shops, discontinuing Corp. Ranch v. Rainbow facility (Sup.Ct.1977) This abandon- years. Misc.2d N.Y.S.2d mark for some seven аsserts, Publica facts); Cue it to (rejecting ment, defense on entitles Co., 23 Colgate-Palmolive use of the mark prevent tions Co. v. bring this suit (Sup.Ct.1965); Saratoga. A.D.2d 259 N.Y.S.2d “Saratoga Geyser” by Waters & Corp. v. Green Cab However, Town Taxi establish undisputed Service facts (Sup.Ct. N.Y.S.2d Brokerage equita- to be Saratoga ‍‌‌‌‌​​‌‌‌​‌​‌​​‌‌‌​​‌‌‌‌​‌​​​​‌​‌‌​​‌​​​​‌​​‌‌‌​‍Vichy continues here- asserting claim from bly precluded in. that in trade Saratoga Vichy argues is not of laches

mark suits the defense when the State closed for an equitable claims available defeat facility, wrote the injunction, equitable but to defeat only regarded it not suggesting letter With accounting profits. claims for an valuable, but that as the State’s trademark claims, posi to the respect federal law existence regarded the continued long rejected; leading one tion in to its own product as beneficial example is a decision of the United States years, seven During terests. the next Sara- Supreme in favor of Court acquiesce as it had toga Vichy continued Republic Saratoga Vichy itself. French 1971, knew that although it from 1910 to 427, 145, 48 191 24 S.Ct. Spring seeking new licensee for a the was State rejec (1903). L.Ed. 247 Fоr more recent effec Saratoga had trademark 703; tions, Zeiss, supra, 433 F.2d at see Carl When the licensee tively accepted as valid. Brands, F.Supp. at Cigar supra, 457 Cuban selected, finally Saratoga Vichy was wrote 1096; Haviland Haviland & Co. v. Johann to its buy rights to it and offered to the 928, (S.D.N.Y. F.Supp. 955 Corp., China 269 $50,000. While Vi trademark for claims, 1967). respect With to the state law the final letter chy seeks to characterize Vi greater support there is negotiation as an offer for this unsuccessful Rosenberger chy’s position. Cohn & the fact remains that took quit-claim, Ruderman, Inc. v. Kaufman & letter, to that if indeed it prior no action (Sup.Ct.1952); A.D. N.Y.S.2d suit, present prior action to the any took Records, 278 A.D. Goody, Columbia Inc. v. opposition its to use of would indicate 401, 105 (Sup.Ct.1951); N.Y.S.2d To be trademark. “Saratoga Geyser” Productions, Inc., Tiffany Tiffany & Co. v. necessary any sure, normally not it is aff’d (Sup.Ct.) 147 Misc. ‍‌‌‌‌​​‌‌‌​‌​‌​​‌‌‌​​‌‌‌‌​‌​​​​‌​‌‌​​‌​​​​‌​​‌‌‌​‍264 N.Y.S. infringers put potential to trademark owner per curiam, A.D. 260 N.Y.S. 821 But rights. its protect in order to notice mem., (1932), 262 N.Y. 188 N.E. aff’d previous acquiesced in a here respect to New (1933). But even mark, arguably infringing use of an and “in' law, is made York the distinction mark, although tempo very that this knew equita creating an absence of elements use, of process out was in the rarily Rosenberger, supra, estoppel,” ble Cohn & some being revived. It should have taken 63. 280 A.D. at N.Y.S.2d protect to its affirmative action upon its parties who relied acknowledges any against innocent warning let simple prior acquiescence. A possibility against of relief use of the “Sar- case, there In this trademark New York ter would have sufficed. atoga Geyser” opinion, would have been successful. light kind In of the Carlsbad unlikely supra, highly suit of this it is from the State was licеnse based on the in fact there was an warning; was no such trademark, availability as well encouragement. of the as the letter uncontradicted and the availability facilities of the wells. for seven unquestioned knowledge Despite It is continued pro- that the sometimes said seeking a licensee that the State product infringing duction and sale of an product’s long- put product, to and reliance, Tisch does not see Ho- constitute trademark, market, back on the established Inn, Inc., tels, Inc. v. Americana nothing. did (7th 1965); Alfred Dunhill of Cir. conduct thus establishes Saratоga Vichy’s London, Distillers Inc. v. Kasser Products delay.” conduct of than “mere The more (E.D.Pa.1972), Waters of establish mem., aff’d reliance, es and there both innocence a new entry But the into busi- defendant’s equities. balance fore determines acquiescence ness in reliance on inclusion the term original about validity in the of the trademark to be natural, given in its mark was case, In this licensed is a matter. different waters; of that area for mineral fame reliance is sufficient Saratoga’s Waters many products using apparently there were against supрort defense Sar- equitable its time, and that name at the State’s atoga Vichy’s “Saratoga even if claims regarded as decision cannot be an effort used for a Geyser” mark was not Vichy.” from copy or benefit time. bottling offered to sell its When the State general This no de conclusion offers operation, naturally included the estab grave in the scavenging fense to infringers “Saratoga Geyser” in the lished trademark Only yard spe trademarks. abandoned sale, will with this good since the associated cial support estoppel will circumstances of the value. large part mark was a license’s in the face claim of non-use. The of a context, registration acquiesced trademark owner must have stopped shortly after mark, previous use of the must operating bottling plant clearly its de being actual that an effort notice signed clarify rights, order to make through made resume its use sale offering the license it was more valuable. relying upon an innocent con purchaser Saratoga understandably decided case, present tinued In the all validity. trademark when the bought retain this it in present; addi these circumstances were license; regarded acting hardly it can be as tion, letters wrote two indi continuing in bad faith for use the name “Saratoga Geys cating regarded it acquired. courts bar When refuse to validity. continuing er” mark to have plaintiff’s a suit on the basis “mere so delay,” they often do because it would The Defense Trademark not a equitable be to excuse defendant who Vichy’s Even if action not were committing has fraud. conscious See laches, barred the defendants this suit Broadcasting System, DeCosta v. Columbia summary judgment. wоuld be entitled to Inc., (1st 1975), F.2d 514 cert. 520 Cir. Saratoga Vichy’s trademark is denied, 96 47 S.Ct. fact, In Vichy,” “Saratoga.” not Sara- Inns, (1976); Holiday Inc. v. L.Ed.2d toga “Saratoga,” case held that Carlsbad Inn, Vaudable Holiday supra; v. Montmar alone, standing company’s was not tre, Inc., 20 Misc.2d 193 N.Y.S.2d 332 it, trademark, as a implied geo- and case, however, (Sup.Ct.1959). In this term, freely could be used graphical nothing remotely is resembling conscious others. 45 at 262. order to fraud. “Saratoga Geyser” is claim that mark therefore, Saratoga There is substantial evidence that infringement, defendants, particularly “Saratogа” Waters Sar term must establish that meaning that re- plaintiff’s acquired secondary relied conduct. has atoga, upon a product. fers to its Saratoga’s buy decision to own A concerning issue Saratoga Vichy now labels its threshold Although govern abandonment claim is the choice of single “Saratoga,” with the word products ing governs law. State law the issue of only for a brief done so issue abandonment insofar as that affects time, prior a months to the initiation of few claim, but it is not state law clear claim, however, of its is suit. The basis govern whether state standаrds federal or beverage company pro- that it the issue of of a abandonment nonfederal ducing products used the term “Sara- asserted as a a that is defense to (either part mark) toga” alone or as claim of of a federal infringement trade between this term mark. state law on Since York New is the natural abbreviation the trade- abandonment, applicable, issue of even if is period, mark it of this used for most “Sara- not it is well-developed, appro particularly claim toga open While this is Vichy.” priate by analogy, tо apply federal law question, some it is the sort factual issue respect to state and federal both the claims. precludes summary judg- that normally This is what York trademark the New stat ment. ute’s of the term undefined use “abandon suggests, ment” see N.Y.Gen.Bus.Law however, case, In this Vi 367(4)(a), and what the few relevant cases supportable, claim, factually is chy’s even if imply, Corp. see v. Never Neva-Wet Wet matter of law. if insufficient as a Even Processing N.Y. N.E.2d Vichy has the name (1938); & Rockowitz Corset Brassiere use of the because its name has 272, 162 Corp. v. Madame 248 N.Y. N.E. meaning, it secondary a could not (1928). term prevent use of that one whose The federal standard for abandon use had begun secondary before mean ment trademarks is set forth in the Lan ing was acquired. Paper Scott Co. v. Act, ham provides: which “A mark shall be Gold, Liquid Scott’s (a) deemed to be When its use (3d ‘abandoned’ — 1978) (“Priority not depends Cir. has been with intent discontinued not to upon obtaining in first which mark succeeds resume. Intent not to resume be in meaning upon but secondary whether the ferred from Nonuse circumstances. for two prove by preponderance can рrima consecutive facie shall aban possessed the evidence that his mark sec (1976). donment.” U.S.C. § ondary meaning at the time the defendant statute thus two elements for an requires mark.”); Speed his use of the commenced intent abandonment —non-use and not Products, Inc., Products v. Tinnerman Co. use, element, permits resume the first period, two-year when established for rule, As a result of this “prima create a facie abandonment.” What could rely upon successfully secondary the statute not make clear what does meaning if Waters of obtained a “prima facie” means this context. It prior mark to the earliest time established could mean non-use for two al that mark Vichy’s when could have trier, ways creates an issue of fact for the meaning. acquired secondary Unless the or it could two years mean that non-use for was “Saratoga Geyser” by mark abandoned creates a presumption abandonment that 1978, non-use 1971 and it would be between disappears by contrary when rebutted evi indisputable any secondary meaning of that complicated dence. The is by matter by plaintiff was after fact that element ‍‌‌‌‌​​‌‌‌​‌​‌​​‌‌‌​​‌‌‌‌​‌​​​​‌​‌‌​​‌​​​​‌​​‌‌‌​‍of the second abandon into “Saratoga Geyser” came use. There- ment, intent, state and is a mental as such fore, to summary entitlement always defendants’ might be be inferable thought to judgment on the merits of the objective trademark like non-use. from an fact this defense whether depends upon case, the undis- non-use for shown more has puted Saratoga Vichy’s hand, facts refute claim than two other de years. On the that undisputed abandoned. fendants facts presented Judge agree Foley We York’s non- rebut New

to abandonment. justify of this undisputed facts case legis- the decision of the by use caused on the for defendants summary judgment withdraw from to have the State lature abandonment, this conclusion business, and the issue of mineral water Geyser” means that the mark continously to sell the sought thereafter use in original be from its continues to valid good will and trademark. business with its possible acquisi 1910, predates any which inconsistent completely are These facts meaning secondary tion the mark. In- with an to abandon intent “Saratoga.” use of deed, allege not even does Thus, an abandon. whether intent to Vichy’s This resolves summary judg- appropriate matter is and fed trademark claims under both state depends ment on whether Saratoga Vichy’s eral unfair law. state law presump- a non-use creates rebuttable legally insuffi competition claim is also contrary disappears tion that the face of based on the notion cient. This claim is to infer intent permits evidence or the trier necessary that the only finding is abandon, despite contrary evidence. “unfair,” as the defendant’s action has term. New York judge interprets that trial “prima think faсie abandon We flexible, but it is law in this area is indeed ment” 1127 means no more as used § essence an unfair that flexible. The presumption than a abandon rebuttable New law is claim York competition under abandonment, place, ment. first be In the misappropriated has that the defendant interest, ing property of a forfeiture expenditures of another. See labors and 1 J. T. McCar strictly proved, see should be Flexitized, Corp., Inc. v. Flexitized National thy, Competition Trademarks Unfair 774,'781-82 (2d 1964); Electro (1973), statutory 17.3 at 592-93 and the Inc., Val-Worth, Corp. lux v. N.Y.2d proof narrowly aid to con such should be (1959); 161 N.E.2d 190 N.Y.S.2d 977 Moreover, though always strued. intent is Opera Association, v. Metropolitan Inc. subjective matter of inference thus Wagner-Nichols Recorder 199 Misc. rarely judgment, to summary amenable (Sup.Ct.1950), aff’d N.Y.S.2d 483 cases that have found no intent abandon curiam, per 279 A.D. N.Y.S.2d suggest objective facts can satisfacto accord, (1951); International News Service rily explain point non-use to the where an Press, v. Associated U.S. S.Ct. is inference of intent abandon unwar (1918). to this 63 L.Ed. Central are undisputed ranted. And if those facts of bad None notion is some element fаith. summary judgment and strongly probative, is case. Waters of Sarato apparent this appropriate. Supreme is As Court ga bought, to use mark it a mark seeks observed, unexplained “Acts which would that had been established the seller. be sufficient establish abandonment no of fact There is averment to indicate by showing answered attempting capitalize that it is on Sarato up never give was an intention to and relin ga doing Vichy’s efforts so. Conse quish right claimed.” v. Eis Saxlehner claim, quently, like the trademark Co., 19, 31, ner & Mendelson U.S. claims, appropriate judg for summаry 7, 12, (1900). Baglin S.Ct. 45 L.Ed. 60 ment, Saratoga Vichy’s even if suit were 580, 598, Cusenier 31 S.Ct. not barred laches. (1911). L.Ed. 863 And in Ster Affirmed. Industries, Brewers, ling Schenley Inc. v. 675, 680, 58 CCPA 1172 OAKES, (dissenting): Judge Circuit

(1971), and Patent the Court Customs Appeals of undisputed majori- concluded that facts I from the required am to dissent negated “presumption” record of aban ty and reverse the district opinion would donment years’ despite judgment ap- from two non-use grant summary court’s of contrary pellees Saratoga Vichy’s five conclusion the Patent Office by on three of origin designation and Board. of Appeal Trademark Trial claims—those for false though appellees’ even confusion compe- supporting 1125(a), for unfair under 15 U.S.C. § law, allegations. papers common and did not contest these under New York tition parties moving appellees its mark or name under as the dilution of Thus “to show initial 368-d. failed to meet their burden § N.Y.Gen.Bus.Law ly genuine concerning issue the absence of a motions, summary judgment appellees’ Adickes v. H. Kress any material fact.” S. (1) two facts: that “Sara- they upon relied 144, 159, 1598, 1609, & S.Ct. “Saratoga” was toga Vichy” rather than (1970). 26 L.Ed.2d (2) trademark and appellant’s registered dispute the State’s appellant Saratoga that did held that district also The court “Saratoga” use of name of some form the were barred laches and Vichy’s claims products for on the mineral water State’s allegation that its of met abandonment demonstrating either sixty years, more than “by a of circum- showing extraordinary acquiescence in that use or laches on the stances which excuse nonuse.” The court’s Vichy. the first of part Saratoga of Since discussion, however, Saratoga ignored Vi- disputed, appellees was not these assertions argument chy’s primary that its еxclusive judgment summary to on Sar were entitled rights began only again after Vichy’s infringe federal atoga placed the on to improperly burden it show claim, ment 15 U.S.C. and New any showing harm in the absence lack claim, infringement York trademark N.Y. of harm. b; Gen.Bus.Law mark “Sarato § 368— The “extraordinary cited circumstances” ga” by Saratoga registered was never Vi allega- by the district court to refute the chy apply only the respective statutes unpersuasive. tions of abandonment are to registered trademarks. See Vi The court found that the nonuse occurred chy Spring Co. Carlsbad legislature “public made a because state (S.D.N.Y.1942). But in delete policy determination” to funds —a my register view failure to the mark “Sara “over decision which the defendants had no insufficient, itself, toga” is in and of legislature state control.” But since the claims, Saratoga Vichy’s defeat three other entity independent cannot be considered an Labs, ‍‌‌‌‌​​‌‌‌​‌​‌​​‌‌‌​​‌‌‌‌​‌​​​​‌​‌‌​​‌​​​​‌​​‌‌‌​‍Inc., Design Corp. see Bose v. Linear from the State’s Commissioner of Parks and 1972); Allied Recreation, simple fact that the State Mechanical Corp. Maintenance v. Allied judgment made a considered business 538, 541-42, Trades, Inc., 42 N.Y.2d production amount to an discontinue cannot 630-31, 369 N.E.2d N.Y.S.2d sufficient circumstance” “extraordinary (1977). alle- abandonment. The any alleged excuse Vichy’s primary contention gation simply not met of abandonment rights to use the exclusive obtained judgment papers. in summary sparkling water “Saratoga” name affirm- not base majority The here does products after 1971 when during determination ance on the district court’s the New legislature York state deleted to demonstrate Vichy failed bottling operation. funds from the State’s confu- secondary meaning or likelihood of argument The is that the name Instead the assertion is that the “un- sion. secondary meaning associat- disputed support appellees' conten- facts” products ed exclusively appellant’s Saratoga has guilty tions that lach- since abandoned es and that no abandonment has occurred. through nonuse use “Saratoga,” name and that of “Sarato- recognize does that Sarato- majority gen- ga” or licensee would to exclusive use “Sara- ga Vichy’s claims erate confusion. closing toga” arise after the majority bottling plant. The my improperly view The district court attempts then to show that Saratoga Vichy, in placed the burden on motion, since guilty has been of laches summary judgment meeting had from as it showing support “continuing] acquiescence an affirmative make meaning 1971, although it knew allegations secondary 1910 to keep the part of to its mark on the State seeking a new licensee for a State was during alive this And that the Vichy period. had effec- Saratoga that registered the trademark simply There is State tively as valid.” aсcepted 21, 1972, January Geyser” New York on however, the State was no that showing, though that is Even the immaterial. period most of seeking a licensee for intention to con- the demonstrated State’s facility bottling lay the dor- during which date, that I do using the mark as of tinue mant, any showing Saratoga that less much hqw bearing on whether any not it has see Indeed, Vichy any efforts. “knew” such rights it any preserve the intended to State appeal (page brief on the Commissioner’s 1972 to 1976. had from “Saratoga” to use not 10) that the was in fact indicates State actively spring a from the soliciting licensee short, on this I do believe that not was May of 1976 because it 1972 until can be accused of Saratoga Vichy record litigation with its protracted involved in rights long 1971. As sleeping on after another two former distributor. And product on competing as had the State no any was made with by went before deal apparent attempt the and made no market this the licensee. All of is corroborated product period for a of four to license its use began fact the to the bot- that State years, required was not to tling university a office annex facility as the provide any warning to State. Once January beginning in of 1973. after product the licensed its State to waiting until 1976 renew apparently majority apparently The bases its view licensee, appellant took imme- for a search Vichy that the Saratoga that knew State action, to the attempting buy first out diate continually seeking was a new licensee dur- bringing then this lawsuit. licensee and first, ing the on two letters. The 27, 1971, Vi- dated states April conclusion that majority’s The second chy’s own desire to take over State’s “undisputed facts” that demonstrate wаs written bottling facility. This letter by the suffers was no abandonment State bottling before the closed down State infirmity same as its laches discus- from the be operation certainly interpret- cannot in the I do not see those “facts” sion: ed either was seek- to show that State Indeed, summary judgment record. as al- ing a between 1972 and 1976 or licensee noted, to appellees did even seek ready Vichy any knowledge in the allegation refute the of abandonment taking place. The that such a search was 10(e) judgment papers or Rule summary 9, 1978, letter, reрre- second dated October notes, appel- majority As statements. pay sents for to proposal a prima facie lant has made out a case Springs in re- appellee abandonment under U.S.C. § conveying turn Waters’ as all of “Saratoga” by showing nonuse of name the State’s licensee to for more than two consecutive State $50,000. see can majority I do not how the pre- years. majority finds dispute the contention that this second let- rebutted, however, be- sumption attempt merely represented ter an to secure plаnt cause after was closed an quitclaim appellees, attempt a from sought continuously “the . . State . days high legal which expense in these good to with its will and sell business avoiding aimed at surely legitimately was But in connec- trademarks.” as discussed argument made that lawsuit. The is Sara- I argument, in the tion with the laches see obligation to “warn” toga Vichy had some showing such “continuous” record no the two in the time between im- and indeed the Commissioner attempt, (Brief no letters and 1978 that opposite in 1971 concedes the pliedly right complaint longer in the State’s acquiescing Nor does the failure part But the view on the use the name. “intent” abandon allege majority’s warning required, support conceded some lend law, 15 U.S.C. normally necessary,” “not based Under federal conclusion. means definition I abandonment apprehension think mistaken that Sar- been discontinued use mark “has atoga Vichy was aware of some intention (Emphasis intent not to resume.” Thus, allegation abandon- added.) implies allegation necessarily

ment the mark. to cease use of intent event, interpretation a narrow such

In would antithetical complaint

of the pleading. federal

the broad rules of Theatres, v. Inc. 8(f); Beacon

Fed.R.Civ.P.

Westover, 506, 79 S.Ct. 359 U.S. (1959); New York State 3 L.Ed.2d 988 Association, Diamond, v.

Waterways Inc. 1972).. (2d on the record below abandonment

Since occurred, summary judg- well

may have were inappropriate.

ment was If there

abandonment, well right to use its mark

completely lost its if correct

again in the in- exclusive

“ha[d] Callman, The of Unfair terim.” 3 R. Law Monopolies

Competition, Trademarks view, 79.4, my ed.

then, disputed of mate- there remain issues fact,

rial on trial absent resolvable appellees. showing by

new KAYNARD, Regional M. Director

Samuel Region Twenty-ninth the Na- Board, For and

tional Relations Labor LABOR Behalf ‍‌‌‌‌​​‌‌‌​‌​‌​​‌‌‌​​‌‌‌‌​‌​​​​‌​‌‌​​‌​​​​‌​​‌‌‌​‍of NATIONAL BOARD, Petitioner-Appel-

RELATIONS

lee, LINGERIE, INC., Under-

PALBY Elmont Argus Lingerie Corp.,

wear Inc., Respon- Sportswear,

Richwear

dents-Appellants.

No. Docket 80-6018. Appeals,

United Court of States Circuit.

Second

Argued March 1980. July

Decided

Case Details

Case Name: Saratoga Vichy Spring Co., Inc. v. Orin Lehman, Commissioner of Parks and Recreation of the the State of New York and Waters of Saratoga Springs, Inc.

Court Name: Court of Appeals for the Second Circuit

Date Published: Jun 5, 1980

Citation: 625 F.2d 1037

Docket Number: 660, Docket 79-7671

Court Abbreviation: 2d Cir.