## Facts

- Major League Baseball Properties, Inc. managed licensing for Major League Baseball clubs’ trademarks and logos; Los Angeles Dodgers, Inc. claimed ownership of “Brooklyn Dodgers” and related marks after the team relocated in 1958.
- The “Brooklyn Dodgers” name had acquired strong secondary meaning in New York before the 1958 relocation.
- After 1958, the Dodgers ceased operating under the “Brooklyn Dodgers” team name; the court found no bona fide commercial trademark use of any “Brooklyn Dodgers” mark from 1958 to 1981.
- Defendants opened a Brooklyn sports bar and restaurant in 1988 using the name “The Brooklyn Dodger,” with related signage and promotional materials.
- Plaintiffs sued under the Lanham Act and New York law for infringement, false designation of origin, dilution, unfair competition, and alleged counterfeiting; defendants asserted abandonment and sought cancellation of certain later-issued “Brooklyn Dodgers” registrations.
- After a bench trial, the district court entered findings and judgment for defendants in 1993; the judgment and opinion were later vacated in 1994 pursuant to settlement and a joint motion to vacate, and the action was dismissed.

## Issues

1. Whether defendants’ use of “The Brooklyn Dodger” for a Brooklyn sports bar and restaurant created a likelihood of confusion with plaintiffs’ asserted “Brooklyn Dodgers” marks under the Lanham Act and related state-law theories.
2. Whether plaintiffs had abandoned any protectable rights in “Brooklyn Dodgers” under 15 U.S.C. § 1127 due to nonuse and intent not to resume use.
3. Whether a finding of abandonment defeated plaintiffs’ claims and supported cancellation of certain “Brooklyn Dodgers” registrations obtained after defendants’ 1988 application.

## Decision

- The court ruled for defendants on plaintiffs’ infringement and related claims, finding plaintiffs failed to prove actual confusion or a likelihood of confusion under the Polaroid factors.
- The court held plaintiffs had abandoned the “Brooklyn Dodgers” mark based on prolonged nonuse and lack of evidence of intent to resume bona fide commercial use.
- The court granted relief consistent with the abandonment finding, including support for defendants’ cancellation counterclaims as to certain later registrations premised on continued rights.
- The 1993 opinion and judgment were later vacated on joint motion in 1994, and the case was dismissed.

## Legal Principles

- Lanham Act abandonment requires both (1) discontinuance of trademark use and (2) intent not to resume use; extended nonuse can create a rebuttable presumption and support an inference of intent not to resume.
- Once a prima facie case of abandonment is shown, the burden shifts to the trademark claimant to produce evidence of intent to resume bona fide commercial use within a reasonable time.
- Token, nostalgic, or purely historical uses that do not serve a current source-identifying commercial function may be insufficient to maintain trademark rights; “warehousing” a mark is not permitted.
- Likelihood of confusion in the Second Circuit is assessed under the Polaroid multi-factor test; similarity and historical strength of a mark may be outweighed by weak product/service proximity, lack of actual confusion, and absence of bad-faith intent.

## Conclusion

The district court concluded that a Brooklyn sports bar’s use of “The Brooklyn Dodger” did not create a likelihood of consumer confusion with the asserted “Brooklyn Dodgers” marks and that plaintiffs had abandoned “Brooklyn Dodgers” through decades of nonuse without credible evidence of intent to resume bona fide commercial use; the decision was later vacated and the action dismissed following settlement.


Major League Baseball Props., Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993), vacated (S.D.N.Y. May 4, 1994)