## Facts

- Imperial Tobacco Limited owned a U.S. registration for the “JPS” cigarette mark on the Principal Register, obtained in 1981 based solely on a foreign registration under Lanham Act § 44(e), without alleging U.S. use.
- From the 1981 registration date until Philip Morris filed a cancellation petition in 1986, there were no U.S. sales of cigarettes under the mark; this multi-year nonuse was undisputed.
- Philip Morris petitioned to cancel the registration, alleging abandonment under Lanham Act §§ 14 and 45.
- On cross-motions for summary judgment, Imperial submitted affidavits describing market-entry efforts (e.g., research, planning, discussions with potential partners) and asserted it never intended to abandon the mark.
- After the cancellation petition, Imperial made limited U.S. sales (about 50,000 cigarettes) in 1987, apparently connected to a § 8 declaration of use.

## Issues

1. Whether Imperial’s prolonged nonuse of the mark in U.S. commerce constituted abandonment under the Lanham Act.
2. Whether Imperial’s evidence of market-entry efforts and later limited sales created a genuine issue of material fact sufficient to defeat summary judgment on abandonment.

## Decision

- The Federal Circuit affirmed the TTAB’s grant of summary judgment for Philip Morris and the cancellation of Imperial’s registration.
- The court held that undisputed nonuse for well over two consecutive years established prima facie abandonment.
- Imperial’s evidence did not sufficiently rebut the presumption by showing a continued intent to use the mark in U.S. commerce on the registered goods.
- Post-petition sales did not cure abandonment that had already occurred during the prior period of nonuse.

## Legal Principles

- A mark is abandoned when its use has been discontinued with intent not to resume; nonuse for two consecutive years constitutes prima facie evidence of abandonment. (15 U.S.C. § 1127)
- Once prima facie abandonment is shown by prolonged nonuse, the registrant must produce evidence sufficient to permit a finding that it intended to resume use in U.S. commerce on the registered goods.
- Internal planning, exploratory negotiations, or generalized market-entry activities, without concrete steps tied to near-term U.S. use on the registered goods, may be insufficient to rebut the presumption of abandonment.
- Registrations obtained under Lanham Act § 44(e) remain subject to U.S. abandonment standards; foreign-based registration does not insulate a mark from cancellation for nonuse.
- Subsequent “resumption” of use after the relevant nonuse period (including after a cancellation petition) does not retroactively negate a completed abandonment.

## Conclusion

The court upheld cancellation of a foreign-based U.S. trademark registration where years of undisputed nonuse triggered a statutory presumption of abandonment and the registrant’s market-entry efforts and later limited sales did not create a triable issue that it intended to resume U.S. use on the registered goods during the nonuse period.


Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990)