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Keywords

appealburden of prooftrademark
willtrademarkcorporationgood faithcommon law

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Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 83 A.L.R. Fed. 281, 217 U.S.P.Q. 1200

Facts

Humble Exploration Company, Inc. appealed an order from the district court that enjoined its use of the name 'Humble' as a trade name. The case arose after Exxon Company, U.S.A. changed its name from Humble Oil & Refining Company and claimed that it had not abandoned the 'HUMBLE' trademark. The court examined the limited sales of 'HUMBLE' products made by Exxon as part of a trademark maintenance program and whether these constituted sufficient use to avoid abandonment under the Lanham Act.

Humble Oil and Refining Company was founded as a Texas corporation in 1917. Its activities included oil exploration, refining and marketing. In 1959, that company and the other regional affiliated oil companies owned by Standard Oil Company of New Jersey merged to form a larger Humble Oil & Refining Company, a Delaware corporation.

Issue

Did the limited sales of 'HUMBLE' products by Exxon constitute sufficient use to avoid prima facie abandonment of the trademark under the Lanham Act?

Is the limited use of a famous trademark solely for protective purposes a use sufficient to preclude abandonment under the common law and the Lanham Act?

Rule

Under the Lanham Act, a trademark is deemed abandoned when its use has been discontinued with intent not to resume use. Nonuse for two consecutive years is prima facie evidence of abandonment. The burden of proof lies with the party claiming abandonment, but if a prima facie case exists, the trademark owner must demonstrate intent to resume use.

Analysis

The court found that Exxon's limited sales of 'HUMBLE' products were insufficient to establish use that would prevent abandonment. The sales were primarily for protective purposes and did not serve to identify the source of the goods. The court emphasized that the mark must play a role in identifying the source of goods to avoid abandonment, and in this case, it did not.

The limited arranged sales of 'HUMBLE' products as part of Exxon's trademark maintenance program did not constitute 'use' sufficient to avoid prima facie abandonment under Lanham Act where the mark 'Humble' was used only on isolated products or selected invoices sent to selected customers, and no sales were made that depended upon the HUMBLE mark for identification of source.

Conclusion

The court reversed the district court's finding that Exxon had not abandoned the 'HUMBLE' trademark and remanded the case for further proceedings regarding Exxon's intent to resume use of the mark.

The judgment is reversed and the case is remanded for further proceedings consistent with this opinion.

Who won?

The prevailing party in this case is Exxon Company, U.S.A. The court determined that Exxon's limited use of the 'HUMBLE' trademark did not constitute sufficient use to avoid abandonment under the Lanham Act. The court's analysis highlighted that the sales made were not intended to identify the source of the goods, which is a critical requirement for maintaining trademark rights.

The court found that Exxon's use of the HUMBLE mark 'in commerce for protective purposes is a good faith use' because of the residual goodwill built up in the mark.

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