## Facts

- Emergency One, Inc. (E-One) manufactured fire trucks and acquired the AMERICAN EAGLE trademark and related goodwill in 1989.
- E-One used AMERICAN EAGLE on a limited number of fire trucks through 1992, then stopped making trucks under that mark.
- After 1992, E-One’s use of AMERICAN EAGLE was largely limited to uniforms, t-shirts, and other promotional items rather than fire trucks or sales-related materials.
- In 1994, a former employee associated with the acquired business founded American FireEagle, Ltd. (AFE), a competing fire truck manufacturer, using the AMERICAN FIREEAGLE mark.
- Both marks used similar imagery (a bald eagle over an American flag).

## Issues

1. Whether AFE was entitled to judgment as a matter of law that E-One abandoned the AMERICAN EAGLE mark under 15 U.S.C. § 1127.
2. Whether the jury instructions correctly stated trademark abandonment law, including what qualifies as bona fide “use in the ordinary course of trade” and the required temporal specificity of “intent to resume” use.

## Decision

- The Fourth Circuit vacated the district court’s judgment and injunction against AFE and remanded for a new trial.
- AFE was not entitled to judgment as a matter of law because E-One presented evidence from which a jury could find an intent to resume use of AMERICAN EAGLE on fire trucks.
- The district court’s abandonment instructions were legally inadequate and could have misled the jury, requiring a new trial.

## Legal Principles

- Under 15 U.S.C. § 1127, a mark is abandoned when use is discontinued with intent not to resume; nonuse for three consecutive years is prima facie evidence of abandonment.
- “Use” means bona fide use in the ordinary course of trade, not activity undertaken merely to reserve rights in a mark.
- For marks used on goods, “use” generally must relate to the goods themselves or sales-related materials, not merely generalized promotional items.
- To rebut prima facie abandonment, intent to resume must be directed to resumption of bona fide commercial use in the reasonably foreseeable future, not an indefinite or speculative plan.
- A new trial is warranted when jury instructions omit or dilute key elements of the governing legal standard in a way that may affect the verdict.

## Conclusion

The Fourth Circuit held that although E-One presented enough evidence to avoid judgment as a matter of law on abandonment, the jury was not properly instructed on bona fide use and the requirement that intent to resume be tied to resumption in the reasonably foreseeable future; the judgment and injunction were therefore vacated and the case remanded for a new trial.


Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d 531 (4th Cir. 2000)