Cancellation of marks fails – it won’t incentivize enforcement

If Congress were to redefine abandonment to specifically include situations where a trademark owner fails to police its mark against known acts of counterfeiting and infringement, the courts would then be faced with the burdensome task of determining whether a given mark had ceased to identify the source or quality of goods bearing the mark. That determination would involve a "highly factual analysis of consumer perception and identification" of the trademark at issue, 457 and the defendant would be forced to prove that by failing to sue others, the trademark owner caused the mark to lose its significance. The result would be increased uncertainty for trademark owners about the extent to which they are required to police the marketplace against infringers, and counterfeiters would ultimately be rewarded for their own bad acts.

Weakening or canceling trademark registrations of electronic parts manufacturers makes little sense and would be ineffective at addressing the problem of counterfeit electronic parts. First, there is no evidence that, despite widespread counterfeiting, the marks of any electronic parts manufacturers have become generic terms that should be subject to cancellation. To the contrary, it may actually confirm their strength. Sophisticated purchasers typically understand the risks associated with buying on the open market, but they choose to do so anyway. Further, imagine a world in which TEXAS INSTRUMENTS, 458 XIL1NX 45 9 LINEAR,4 60 and INTEL461 were no longer protected and were being used on semiconductor devices and other electronic parts by multiple companies. 462 The level of consumer confusion would escalate exponentially, and every part would be suspect. Having been stripped of their property rights, the former owners of those trademark registrations would have little incentive to authenticate their own products or to cooperate with law enforcement. The "abandonment" approach also ignores other proactive measures by the manufacturers, including developing innovative product features to combat counterfeiting, participating in standards setting organizations, engaging in discussions with industry members and government representatives, and cooperating with law enforcement on criminal prosecutions. Redefining abandonment is not the solution, and "policing" a trademark should take into account more than just the number of infringement suits filed by the trademark owner.