Firm Says AT&T is Clinging to Cingular Mark

CHICAGO (CN) - A business that revives abandoned trademarks says in a federal lawsuit that AT&T is obstructing its attempts to use the Cingular mark, even though it is "crystal clear" that AT&T abandoned the mark seven years ago.

In its complaint, Dormitus Brands says that its in the business of reviving distressed and abandoned brands "that were discarded into the dustbin of history" and revitalizing them, typically by introducing branded products or services that are distinct from those original sold under these monikers.

"For example, the plaintiff's principal has successfully re-established brands of yesteryear such as Brim®, Coleco®/Colecovision®, Cross Colours®, Salon Selectives®, Nuprin®, Ipana®, Rival®, Clearly Canadian®, Not All Snacks Are Created Eagle®," the company says.

Dormitus filed intent-to-use applications for two Cingular Wireless Marks in January 2014, nearly seven years after AT&T took over Cingular and allegedly abandoned the marks.

"Beginning in January 2007, in the most publicized and successful act of commercial trademark abandonment in recent history, it was widely reported in the news media that the defendant AT&T 'will begin to extinguish ... the brand of cellphone operator Cingular, built up with billions of dollars over a few years, to imprint its more-than-century-old name firmly across its services,'" the company says, quoting Reuters.

Dormitus claims AT&T abandoned the Cingular brand to save billions in marketing services by just advertising under the AT&T mark, and in doing so, it abandoned every single one of AT&T's Cingular marks registered by the U.S. Patent and Trademark Office.

"Therefore, it is crystal clear that, during the first half of 2007, the defendant intentionally, publicly, decidedly and unmistakably placed all of its wireless telephone service offerings and products under the famous AT&T brands rather than the Cingular marks," the company says.

However, AT&T didn't see it's actions that way and filed oppositions to Dormitus' applications to use the Cingular marks.

"Glaringly absent from AT&T's oppositions are any allegation that these marks are currently being used in commerce by AT&T in a bona fide manner, and no allegations that AT&T currently intends to resume their use in commerce in the United States," Dormitus says in response. "Rather, AT&T alleges that it is solely concerned about undocumented and theoretical residual association between AT&T and the abandoned Cingular marks that it was so eager to abandon over seven years ago.

"But after three consecutive years of non-use of the Cingular trademarks in commerce, by mid-2010, a prima facie case of abandonment was already established. ... After seven years, by mid-2014, the defendant did not own a single federally registered trademark in the Cingular marks in the United States," the company says.

AT&T allegedly claims it will be irreparably damaged if Dormitus is allowed to use the Cingular marks, and accuses the company's principal, Mark Thomann, of seeking to trade on AT&T's identity.

"The plaintiff was legally entitled to receive a registration on the principal register for the Cingular marks, without risk of proper objection or obstruction from AT&T," Dormitus says.

"This deliberate obstruction has impacted the plaintiff, as it cannot proceed with various commercial opportunities that it was in the process of exploring to commercialize the intended Cingular marks," the company adds.

Dormitus seeks a declaratory judgment that its intended use of the abandoned Cingular marks does not violated AT&T's trademark rights, and would not create consumer confusion with any of its existing valid marks.

It is represented by Joseph Gioconda, of the Gioconda Law Group PPLC, in New York, and James Shimota, of Mavrakakis Law Group, in Chicago.

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