MGB Wins Cancellation of Federal Trademark Registration on Summary Judgment

September 29, 2008

Marshall, Gerstein & Borun ("MGB") attorneys were successful in canceling U.S. Trademark Registration No. 941,497 for DAKOTA for various clothing items on the grounds of abandonment. The owner of the DAKOTA registration, Dakota Industries, Inc., had sued MGB's client, Cabelas.com, in South Dakota charging Cabelas.com with trademark infringement and state and federal unfair competition, among other claims, as a result of Cabela's sales of clothing using "Dakota Vest" and "Dakota Jacket." The lawsuit, which MGB also successfully defended on summary judgment, prompted Cabelas.com to seek cancellation of Dakota Industries' federal registration for DAKOTA, which had not been asserted in the state litigation. In the cancellation proceedings, MGB lawyers leveraged discovery findings from the state litigation. Specifically, MGB relied on tax returns and other business documents and the deposition of the Dakota Industries' principal in order to substantiate its suspicion that the plaintiff had abandoned any trademark rights in DAKOTA years ago and briefed summary judgment on that basis. The Trademark Trial and Appeal Board adopted the position advocated by MGB in its decision dated September 26, 2008, finding that the DAKOTA mark had been abandoned and granting summary judgment in favor of MGB's client with cancellation of the DAKOTA registration being ordered. The MGB attorneys were Thomas I. Ross and Gregory J. Chinlund. [Trademark Trial and Appeal Board Cancellation No. 92047600].