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Birch Publications, Inc. v. RMZ of St. Cloud

July 27, 2004

BIRCH PUBLICATIONS, INC., ET AL., RESPONDENTS,
v.
RMZ OF ST. CLOUD, INC., F/K/A QUEST PUBLICATIONS, INC., ET AL., APPELLANTS.



Stearns County District Court File No. C4-02-5375.

Considered and decided by Willis, Presiding Judge; Lansing, Judge; and Hudson, Judge.

SYLLABUS BY THE COURT

I. A trademark is abandoned when its use has been discontinued with intent not to resume such use.

II. Having "intent to resume" use of a trademark requires the trademark owner to have plans to resume commercial use of the trademark.

III. A party claiming that a trademark has been abandoned must show non-use of the name by the legal owner and no intent by that person or entity to resume use in the reasonably foreseeable future.

IV. A trademark owner cannot protect a trademark by merely having "an intent not to abandon," which would allow a trademark owner to protect a trademark with neither commercial use nor plans to resume commercial use.

The opinion of the court was delivered by: Hudson, Judge

Affirmed

OPINION

In this appeal, appellants RMZ of St. Cloud, Inc., argue that the trial court erred in finding that RMZ abandoned a trademark and is therefore estopped from denying the transfer of the trademark to respondents Birch Publications, Inc. Because the trial court's factual findings were not clearly erroneous, and the trial court did not err as a matter of law in concluding that RMZ abandoned use of the trademark, we conclude that RMZ is estopped from denying the transfer of the trademark to Birch, and we affirm.

FACTS

Ruth Zulkosky and three others organized appellants RMZ of St. Cloud, Inc.*fn1 (RMZ), in late 1998 to publish a business-telephone and internet directory. RMZ published a telephone directory known as "The MIDbook" in 1999 and 2000.

RMZ experienced financial difficulties, and in July 2000, Zulkosky asked Harold Anderson for financial help, and Anderson agreed to help. In order to publish a directory in 2001 and to provide a vehicle through which Anderson could provide financial assistance, Anderson created respondent Birch Publications, Inc. (Birch). Between August 30, 2000, when Birch was incorporated, and September 15, 2000, Anderson provided significant financial assistance to RMZ, including cash-flow funding and equity contributions. Anderson also invested cash in Birch to fund its initial business operations, and Birch purchased some of RMZ's assets, which was memorialized in a bill of sale. The bill of sale does not mention a purchase of all assets or a separate sale of the trademark name "The MIDbook." In the fall of 2000, Birch took over the RMZ office lease and hired several RMZ employees, including Zulkosky, who was given principal responsibility for the day-to-day operations of the Birch business.

On September 20, 2000, RMZ filed a certificate of assumed name for "The MIDbook" with the Minnesota Secretary of State. The certificate was published in the St. Cloud Times on November 2, 2000. On November 10, 2000, Birch filed a certificate of assumed name for "The MIDbook" with the Minnesota Secretary of ...


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