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IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT




No. 13-31112


ACTION INK, INCORPORATED, a Louisiana Corporation,

Plaintiff - Appellant
v.

NEW YORK JETS, L.L.C., a New York limited liability company;
ARKADIUM, INCORPORATED, a New York corporation,

Defendants - Appellees

Consolidated w/ No. 13-31113

ACTION INK, INCORPORATED,

Plaintiff - Appellant
v.

ANHEUSER-BUSCH, INCORPORATED,

Defendant - Appellee




Appeals from the United States District Court
for the Eastern District of Louisiana
USDC Nos. 2:12-CV-46, 2:12-CV-141


Before JOLLY, SOUTHWICK, and HAYNES, Circuit Judges.
United States Court of Appeals
Fifth Circuit
FILED
J uly 23, 2014

Lyle W. Cayce
Clerk
Case: 13-31112 Document: 00512709234 Page: 1 Date Filed: 07/23/2014
No. 13-31112
PER CURIAM:*
This opinion decides the two captioned cases, consolidated on appeal.
Action Ink, the plaintiff and appellant, registered a service mark to use
the phrase Ultimate Fan in the context of promotional contests at sporting
events. It conducted no contests between 1995 and 2012, when it sued the
defendants for infringement. We hold that Action Ink abandoned its mark,
and affirm the respective judgments in each case.
I.
Action Ink, Inc. (Action Ink) has no employees and one sole
shareholder, Michael Eckstein. It owns a service mark for the phrase
Ultimate Fan (the mark). The registration for the mark is for "promoting
the goods and/or services of others by conducting a contest at sporting events.
Action Ink last held such a contest in 1995. Since then, Action Ink has sent
out letters to many businesses alleging infringement, some of which are signed
by Eckstein, who is also a lawyer. Action Ink has also sought unsuccessfully
to interest potential clients in holding promotional contests.
In 2012, Action Ink sued Anheuser-Busch, Inc. (Anheuser-Busch), and
in a separate suit also sued the New York Jets, L.L.C. and Arkadium Inc.
(collectively, the Jets Defendants). Action Ink alleged infringement and false
designation of origin under the Lanham Act,
1
and unfair competition, injury to
business reputation and unfair trade practices under Louisiana law.
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Judge Milazzo in No. 13-31112 awarded summary judgment to the Jets
Defendants. The court held that Action Ink had abandoned its service mark
and consequently had no valid mark that could have been infringed. Judge
*
Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH
CIR. R. 47.5.4.
1
15 U.S.C. 1114, 1125(a).
2
La. Rev. Stat. 51:1405, 51:223.1.
2

Case: 13-31112 Document: 00512709234 Page: 2 Date Filed: 07/23/2014
No. 13-31112
Vance in No. 13-31113 subsequently granted summary judgment to Anheuser-
Busch on the grounds that: (a) collateral estoppel from the Jets suit applied on
the abandonment issue and thus Action Ink had no valid mark and (b) Action
Ink failed to show a likelihood of confusion between its mark and Anheuser-
Buschs. Action Ink now appeals each of the judgments dismissing its
respective complaints.
II.
We first consider Judge Milazzos grant of summary judgment to the Jets
Defendants, which we review de novo. Royal v. CCC&R Tres Arboles, L.L.C.,
736 F.3d 396, 400 (5th Cir. 2013).
The Lanham Act provides that a mark shall be abandoned (1) [w]hen
its use has been discontinued and (2) there is an intent not to resume such
use. 15 U.S.C. 1127. Use is defined as the bona fide use of [a] mark made
in the ordinary course of trade, not made merely to reserve a right in a mark.
Id. (emphasis added). Nonuse for three consecutive years is prima facie
evidence of abandonment. Id. Once a party establishes a prima facie case of
abandonment, it becomes the mark holders burden to show that
circumstances do not justify the inference of intent not to resume use. Exxon
Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir. 1983).
The Jets Defendants have established their prima facie case of
abandonment. We note that
A trademark is a symbol of existing good will. Thus, if for any
reason, the good will of a business or product comes to an end,
there is nothing left for a mark to symbolize. Such a mark should
be officially declared abandoned. If there is no good will or a
reasonable prospect of it, a trademark symbolizes nothing.
3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION 17.14 (4th ed. 1996).
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No. 13-31112
Action Ink performed no contests for seventeen years before filing suit.
Thus, there was nothing left for [its] mark to symbolize. Id.
Action Ink argues that soliciting clients constituted bona fide use. See
15 U.S.C. 1127. Action Ink cites Allard Enters. v. Advanced Programming
Res., 146 F.3d 350, 359 (6th Cir. 1998), which held that the defendants
activities, which included but were not limited to solicitation of clients,
constituted use in commerce. But Allard does not help Action Ink. Unlike
Action Ink, the Allard defendant rendered services to at least one client,
arranging for that client to interview a job applicant. Id. at 353. The Allard
defendant also went on to achieve significant market penetration and sign a
state-wide contract. See Allard Enters v. Advanced Programming Res., 249
F.3d 564, 57374 (6th Cir. 2001). In contrast, Action Ink has nothing to show
for its years of soliciting clients.
As the Jets Defendants have established their prima facie case of
abandonment, the burden shifts to Action Ink to establish that circumstances
do not justify the inference of intent not to resume use, Exxon, 695 F.2d at 99.
Action Ink points to a licensing agreement it signed with Tulane University in
2013. But this agreement does not persuade us that Action Ink had any intent
to resume bona fide use of its mark. First, Action Ink signed the agreement
only after it had already sued the defendants here. Second, Tulanes
consideration for the license suggests a sham agreement, as Tulane agreed to
give 300 tickets to various charitable groups that Tulane had the sole authority
to choose. Third, Action Ink points us to no authority stating that a licensing
agreement, even if legitimate, can resurrect a mark that has been long
abandoned.
The Jets Defendants have thus established abandonment. Because
Action Ink failed to argue on appeal that collateral estoppel on abandonment
does not apply to Anheuser-Busch, we hold that Action Ink also abandoned its
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No. 13-31112
mark with respect to Anheuser-Busch. We consequently do not reach the
likelihood of confusion between Action Inks and Anheuser-Buschs marks.
III.
For the reasons above, the respective judgments of the district courts in
favor of all defendants in each of the cases are
AFFIRMED.
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Case: 13-31112 Document: 00512709234 Page: 5 Date Filed: 07/23/2014
UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT
BILL OF COSTS
NOTE: The Bill of Costs is due in this office within 14 days from the date of the
opinion, See FED. R. APP. P. & 5 CIR. R. 39. Untimely bills of costs must be
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accompanied by a separate motion to file out of time, which the court may deny.
_______________________________________________ v. __________________________________________ No. _____________________
The Clerk is requested to tax the following costs against: _________________________________________________________________________________________
COSTS TAXABLE UNDER
Fed. R. App. P. & 5 Cir. R. 39
th
REQUESTED ALLOWED
(If different from amount requested)
No. of Copies Pages Per Copy Cost per Page* Total Cost No. of
Documents
Pages per
Document
Cost per Page* Total Cost
Docket Fee ($500.00)
Appendix or Record Excerpts
Appellants Brief
Appellees Brief
Appellants Reply Brief
Other:
Total $ ________________ Costs are taxed in the amount of $ _______________
Costs are hereby taxed in the amount of $ _______________________ this ________________________________ day of __________________________, ___________.
LYLE W. CAYCE, CLERK
State of
County of _________________________________________________ By ____________________________________________
Deputy Clerk
I _____________________________________________________________, do hereby swear under penalty of perjury that the services for which fees have been charged were
incurred in this action and that the services for which fees have been charged were actually and necessarily performed. A copy of this Bill of Costs was this day mailed to
opposing counsel, with postage fully prepaid thereon. This _______________ day of ________________________________, ______________.
_____________________________________________________________________
(Signature)
*SEE REVERSE SIDE FOR RULES
GOVERNING TAXATION OF COSTS Attorney for __________________________________________
Case: 13-31112 Document: 00512709258 Page: 1 Date Filed: 07/23/2014 Print Form
FIFTH CIRCUIT RULE 39
39.1 Taxable Rates. The cost of reproducing necessary copies of the brief, appendices, or record excerpts shall be taxed at a rate not higher than $0.15 per page, including cover,
index, and internal pages, for any for of reproduction costs. The cost of the binding required by 5 CIR. R. 32.2.3that mandates that briefs must lie reasonably flat when open shall
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be a taxable cost but not limited to the foregoing rate. This rate is intended to approximate the current cost of the most economical acceptable method of reproduction generally
available; and the clerk shall, at reasonable intervals, examine and review it to reflect current rates. Taxable costs will be authorized for up to 15 copies for a brief and 10 copies
of an appendix or record excerpts, unless the clerk gives advance approval for additional copies.
39.2 Nonrecovery of Mailing and Commercial Delivery Service Costs. Mailing and commercial delivery fees incurred in transmitting briefs are not recoverable as taxable costs.
39.3 Time for Filing Bills of Costs. The clerk must receive bills of costs and any objections within the times set forth in FED. R. APP. P. 39(D). See 5 CIR. R. 26.1.
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FED. R. APP. P. 39. COSTS
(a) Against Whom Assessed. The following rules apply unless the law provides or the court orders otherwise;
(1) if an appeal is dismissed, costs are taxed against the appellant, unless the parties agree otherwise;
(2) if a judgment is affirmed, costs are taxed against the appellant;
(3) if a judgment is reversed, costs are taxed against the appellee;
(4) if a judgment is affirmed in part, reversed in part, modified, or vacated, costs are taxed only as the court orders.
(b) Costs For and Against the United States. Costs for or against the United States, its agency or officer will be assessed under Rule 39(a) only if authorized by law.
) Costs of Copies Each court of appeals must, by local rule, fix the maximum rate for taxing the cost of producing necessary copies of a brief or appendix, or copies of records
authorized by rule 30(f). The rate must not exceed that generally charged for such work in the area where the clerks office is located and should encourage economical methods of
copying.
(d) Bill of costs: Objections; Insertion in Mandate.
(1) A party who wants costs taxed must within 14 days after entry of judgment file with the circuit clerk, with proof of service, an itemized and verified bill of costs.
(2) Objections must be filed within 14 days after service of the bill of costs, unless the court extends the time.
(3) The clerk must prepare and certify an itemized statement of costs for insertion in the mandate, but issuance of the mandate must not be delayed for taxing costs. If the mandate
issues before costs are finally determined, the district clerk must upon the circuit clerks request add the statement of costs, or any amendment of it, to the mandate.
(e) Costs of Appeal Taxable in the District Court. The following costs on appeal are taxable in the district court for the benefit of the party entitled to costs under this rule:
(1) the preparation and transmission of the record;
(2) the reporters transcript, if needed to determine the appeal;
(3) premiums paid for a supersedeas bond or other bond to preserve rights pending appeal; and
(4) the fee for filing the notice of appeal.
Case: 13-31112 Document: 00512709258 Page: 2 Date Filed: 07/23/2014
United States Court of Appeals
FIFTH CIRCUIT
OFFICE OF THE CLERK

LYLE W. CAYCE
CLERK





TEL. 504-310-7700
600 S. MAESTRI PLACE
NEW ORLEANS, LA 70130

July 23, 2014

MEMORANDUM TO COUNSEL OR PARTIES LISTED BELOW

Regarding: Fifth Circuit Statement on Petitions for Rehearing
or Rehearing En Banc

No. 13-31112 Action Ink, Inc. v. New York Jets, L.L.C.
13-31113 Action Ink, Inc. v. Anheuser-Busch, Inc.
USDC No. 2:12-CV-46
USDC No. 2:12-CV-141
---------------------------------------------------
Enclosed is a copy of the court's decision. The court has entered
judgment under FED R. APP. P. 36. (However, the opinion may yet
contain typographical or printing errors which are subject to
correction.)

FED R. APP. P. 39 through 41, and 5TH Cir. R.s 35, 39, and 41 govern
costs, rehearings, and mandates. 5TH Cir. R.s 35 and 40 require
you to attach to your petition for panel rehearing or rehearing en
banc an unmarked copy of the court's opinion or order. Please
read carefully the Internal Operating Procedures (IOP's) following
FED R. APP. P. 40 and 5
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CIR. R. 35 for a discussion of when a
rehearing may be appropriate, the legal standards applied and
sanctions which may be imposed if you make a nonmeritorious
petition for rehearing en banc.

Direct Criminal Appeals. 5
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CIR. R. 41 provides that a motion for
a stay of mandate under FED R. APP. P. 41 will not be granted simply
upon request. The petition must set forth good cause for a stay
or clearly demonstrate that a substantial question will be
presented to the Supreme Court. Otherwise, this court may deny
the motion and issue the mandate immediately.

Pro Se Cases. If you were unsuccessful in the district court
and/or on appeal, and are considering filing a petition for
certiorari in the United States Supreme Court, you do not need to
file a motion for stay of mandate under FED R. APP. P. 41. The
issuance of the mandate does not affect the time, or your right,
to file with the Supreme Court.

The judgment entered provides that appellant pay to appellees the
costs on appeal.


Case: 13-31112 Document: 00512709259 Page: 1 Date Filed: 07/23/2014

Sincerely,

LYLE W. CAYCE, Clerk

By: _______________________
Joseph M. Armato, Deputy Clerk

Enclosure(s)

Mr. Andrew Baum
Mr. Robert Emmet Couhig Jr.
Mr. Michael Lehman Eckstein
Mr. Lawrence Bradley Hancock
Ms. Lesli Danielle Harris
Mr. Peter Edward Moll
Ms. Mary Ellen Roy
Mr. Phillip A. Wittmann

Case: 13-31112 Document: 00512709259 Page: 2 Date Filed: 07/23/2014