A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Declines to Find Abandonment of Registered Mark

In an October 1, 2015 ruling, Judge Valerie Caproni found that the use of the federally-registered “Highline” mark for certain financial services in the phrases “Highland Capital Management” and “Highline Capital Management, LLC” was sufficient use of the mark in commerce to prevent abandonment. In dismissing the defendant’s counterclaim to invalidate the mark, the Court ruled that because the plaintiff “is an investment management firm that manages capital, the addition of the words ‘Capital’ or ‘Capital Management, LLC’ is ‘purely descriptive’ and ‘does not affect the origin-indicating function of the mark.’ The addition of ‘Capital’ and ‘Management’, instead, simply flesh out exactly what financial services are offered by” the plaintiff.
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