— Karen Brennan, Attorney

On December 9, 2009, I blogged about the trademark issues surrounding the famous Tavern on the Green restaurant in Central Park. Well, the New York landmark officially closed shortly after midnight on December 31, 2009, after a blow-out party for 1,700 on New Years Eve. The New York Times reported on the items currently being auctioned to pay the prior owner’s debts including 59 chandeliers, a 14 foot King Kong, champagne buckets and a topiary giraffe.

As previously noted, the Tavern on the Green mark was estimated to be worth $19 million.  The prior owners, the LeRoy family, continue the fight over the name with the City of New York who claims the name belongs to whoever operates the space.  The LeRoy family filed a federal trademark application for the mark in 1978, which registered shortly thereafter.

Since my last blog post, some interesting updates have occurred.  First, if the City of New York loses the fight, the new name of the restaurant (now owned by Dean Poll) will be “Tavern in the Park.”  The City filed a federal intent-to-use trademark application for the new name on November 10, 2009.

Second, on December 30, 2009 (one day before the closing), an individual from Texas filed a federal intent-to-use trademark application for the identical TAVERN ON THE GREEN mark in connection with bar and restaurant services.  There is no question that the application will be initially refused by the Trademark Office, based upon a likelihood of confusion with the registration owned by the LeRoy family.  However, the Applicant may hope to cancel the prior registration for non-use of the mark. This raises a few interesting issues to be addressed, including:

1. Abandonment

If the LeRoy’s win the battle over ownership of the mark, but do not operate a restaurant under the name, have they abandoned the mark so that others may sweep in and use it? Under trademark law, abandonment of a mark occurs when the owner ceases use with no intention to resume use in the future. In addition, non-use for a period of three years is considered prima facie evidence of abandonment. Bankruptcy raises an interesting question as to intent to resume use and whether another party could prove a lack of intent shortly after a business goes bankrupt.

2. Residual Goodwill

Since Tavern on the Green is most likely a famous mark, what about residual goodwill in the name?  As described in a previous blog by Steve Baird, even if there has been a technical and legal abandonment of trademark rights, a potential newcomer must consider the residual goodwill that may form the basis of an unfair competition cause of action.  Residual goodwill recognizes that the goodwill in a trademark doesn’t necessarily go away right away, but there is no definition as to how long residual goodwill in a mark lasts.

Stay tuned to see what happens.