Grocery Outlet Inc. v. Albertson's Inc. , 497 F.3d 949 ( 2007 )

WALLACE, Senior Circuit Judge,

concurring:

I agree with our opinion resolving this appeal, but write separately on the burden-of-proof issue. We have held that under the Lanham Act, 60 Stat. 427, 15 U.S.C. §§ 1051-1127 (1946), the burden of proving abandonment is “strict.” Prudential Ins. Co. of Am. v. Gibraltar Fin. Corp. of Cal., 694 F.2d 1150, 1156 (9th Cir.1982). We have also indicated that this strict burden is equivalent to a “high” one. See Edwin K. Williams & Co., Inc. v. Edwin K. Williams & Co.-East, 542 F.2d 1053, 1059 (9th Cir.1976), citing Am. Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619, 625 (5th Cir.1963) (holding that defendant failed to meet the “burden of strict proof’ required to show abandonment).

Despite these statements, Judge McKeown repeats the incorrect argument she recently made in Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 935 n. 2 (9th Cir.2006), that the burden of proof in abandonment cases is a question unanswered in our circuit. True, we are more accustomed to applying the “clear and convincing evidence” and “preponderance of the evidence” standards. But merely because Prudential and Williams invoke an unfamiliar or forgotten standard does not mean that the burden-of-proof issue is unresolved or that we may disregard those cases.

In my view, meeting a strict burden requires proof by clear and convincing evidence. Before the enactment of the Lan-ham Act, courts often required strict proof to establish a forfeiture. See, e.g., Empress Theatre Co. v. Horton, 266 F. 657, 664 (8th Cir.1920) (rights under a lease); United States v. Four Packages of Cut Diamonds, 247 F. 354, 357 (D.C.N.Y.1917) (diamonds); Aetna Ins. Co. of Hartford, Conn. v. Robinson, 213 Ind. 44, 10 N.E.2d 601, 604 (1937) (rights under an insurance policy). This was also the standard applied to abandonment of trademarks. See, e.g., Saunders v. Stringer, 265 Mich. 301, 251 N.W. 342, 343 (1933); Julian v. Hoosier Drill Co., 78 Ind. 408, 1881 WL 6748, at *3 (Ind.1881) (per curiam) (Hoosier Drill).

In equally disparate cases, however, pre-Lanham Act courts required clear and convincing evidence to establish a forfeiture. See, e.g., Hammer v. Garfield Min. & Mill. Co., 130 U.S. 291, 301, 9 S.Ct. 548, 32 L.Ed. 964 (1889) (mine); C.C. Co. v. United States, 147 F.2d 820, 823-24 (5th Cir.1945) (canned oysters); Carrington v. Crandall, 65 Idaho 525, 147 P.2d 1009, 1011 (1944) (real property); Hoff v. Girdler Corp., 104 Colo. 56, 88 P.2d 100, 102 (1939) (en banc) (gas lease) (requiring “clear, unequivocal and decisive” evidence); Lane v. Amis Bros., 171 Okla. 593, 43 P.2d 73, 75 (1935) (homestead); Dwyer v. Ill. Oil Co., 190 Minn. 616, 252 N.W. 837, 838 (1934) (rights under a contract); Supervisor of Pub. Accounts v. Montreuil, 157 So. 783, 784 (La.App.1934) (cigarettes and a truck). And at least one court expressly required clear and convincing evidence of abandonment of a trademark. See Mathy v. Republic Metalware Co., 35 App. D.C. 151, 1910 WL 20792, at *3 (D.C.Cir.1910); see also Hoosier Drill, 78 Ind. 408, 1881 WL 6748, at *3 (requiring “clear and unmistakable evidence”).

Strict proof was no different than clear and convincing evidence, and they were the same burden. Unsurprisingly, when the Court of Appeals of New York required “strict proof’ of trademark abandonment, see Neva-Wet Corp. of Am. v. Never Wet Processing Corp., 277 NY. 163, 13 N.E.2d 755, 761 (1938), it relied on Mathy and Hoosier Drill.

It is not difficult to imagine why there were simultaneously two equivalent standards of proof under the common law. Statutes or contracts underlying a forfeiture were “strictly” construed. See C.C. Co., 147 F.2d at 824; Cartos v. Hartford Acc. & Indem. Co., 160 Va. 505, 169 S.E. 594, 598 (1933). The same language used to describe the rule of construction may also have come to describe the “higher degree of proof than a mere preponderance” that was the “natural corollary” of that rule. C.C. Co., 147 F.2d at 824.

I will not presume, as Judge McKeown does, that Prudential and Williams idly required “strict proof’ or that a “high burden” be met. I have no doubt that our court meant that abandonment under the Lanham Act must be shown by clear and convincing evidence. This is the only plausible translation of strict proof and high burden, and Judge McKeown offers no other.

I agree with Judge McKeown that 15 U.S.C. § 1127 says nothing about the burden of proof, but she mistakenly concludes that the preponderance of the evidence standard was the “traditional” one. The traditional standard was clear and convincing evidence (or strict proof), and there is nothing in the Lanham Act indicating that Congress relaxed this burden. See Chappell v. Robbins, 73 F.3d 918, 924 (9th Cir.1996) (“We may fairly presume that Congress is aware of the common-law background against which it legislates .... ”).

Judge McKeown also correctly observes that the abandonment defense under the Lanham Act is different than the one under the common law. The Lanham Act requires proof of “intent not to resume ... use” and permits a presumption of abandonment in certain cases, see 15 U.S.C. § 1127, while the common law required proof of “intent to abandon,” Mathy, 1910 WL 20792, at *3. But that does not mean that the Lanham Act adjusted the burden required to prove the defense. In any event, Prudential and Williams require a different conclusion. I would follow our cases.