Sunday, March 30, 2008

TTAB upholds opposition based on applicant’s failure to show bona fide intent to use

On March 28, 2008, the Trademark Trial and Appeal Board (the “Board”) handed down a precedential decision upholding an opposition by L.C. Licensing, Inc., the owner (at the time the opposition was filed) of the word mark ENYCE and mark ENYCE and design (pictured above) both for apparel and headwear, against Cary Berman, the applicant for the mark ENYCE for custom automotive accessories. See L.C. Licensing, Inc. v. Cary Berman, Opposition No. 91162330 (TTAB March 28, 2008) (precedential) (decision here).

While a more detailed analysis of this precedential decision (which also had a 2(d) likelihood of confusion issue) can be found on The TTABlog®, what makes this decision interesting and important is that one of the grounds for sustaining the opposition was the applicant’s lack of bona fide intent-to-use when the application was filed.

L.C. Licensing maintained that Mr. Berman lacked the requisite bona fide intention to use the ENYCE mark in commerce on the identified goods. The Board, citing Lane Limited v. Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.G. & Co. KG, 33 USPQ2d 1352 (TTAB 1994) and Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), stated that the determination of whether applicant had the requisite bona fide intention to use the mark ENYCE on the goods identified in the application must be a fair objective determination based on all of the circumstances and that “absent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use the mark in commerce as required by Section 1(b).”

Mr. Berman acknowledged not having any documents evidencing an intent to use the ENYCE mark on any custom automotive accessories. The Board also quoted the following deposition exchange regarding Mr. Berman’s intent to use the ENYCE mark:
Q. Did you intend – when you filed this [application] did you intend to actually use [the ENYCE mark] on all these goods?
A. Again, there is no business model associated with this until I receive permission to go ahead and use it and then the business model will be produced.
Q. That’s not the question. When you filed this application, serial number 78320850, did you intend to use the mark ENYCE on fitted car covers?
A. Perhaps –
Q. It’s a yes or no answer.
A. I don’t have any – there’s no specific intentions at this time.
Q. No. At that time though. At the time you filed the application.
A. A car bra, if you want to call that a fitted car cover.
Q. Is that a fitted car cover?
A. Yes, I guess.
Q. Shift knobs?
A. Shift knobs, yes.
Q. You intended to use ENYCE on shift knobs.
A. Yes.
Q. On brake pads?
A. Probably not.
Q. No?
A. No.
Q. You didn’t intend to use ENYCE on brake pads?
A. No.
Q. License plate holders?
A. Probably.
Q. Spoilers?
A. Probably.

The Board found no evidence which explained or which outweighed the failure of Mr. Berman to have any documents to support his claimed intent to use the ENYCE mark in connection with custom automotive accessories at the time he filed the application. Furthermore, his explanation of not wanting to create a business model until the opposition had been decided did not explain his failure to have any documents whatsoever at the time the application that would demonstrate his bona fide intent to use the mark. The Board further noted that the mere assertion of an intent to use the mark without corroboration of any sort, documentary or otherwise, is unlikely to provide credible evidence to establish a bona fide intention to use a mark.

In short, Mr. Berman’s lack of any evidence to corroborate a bona fide intent to use the mark when he filed the application supported the conclusion that Mr. Berman did not have a bona fide intent to use the ENYCE mark on custom automotive accessories when he filed his intent—to-use application.

This decision builds on the Board’s non-precedential decision last year in Intel Corp. v. Emeny, Opposition No. 91123312 (TTAB May 15, 2007) (decision here). In that case, the applicant, Steven Emeny, filed an intent-to-use application to register the mark IDEAS INSIDE for what the Board described as a “broad listing of goods and services.” When the application was published for opposition, Intel opposed registration on the grounds of likelihood of confusion and dilution over its mark INTEL INSIDE. Intel later added an additional ground for opposing registration – that the applicant did not have a bona fide intention to use the mark in connection with the recited services. While "bona fide" is not defined in the Lanham Act, the legislative history which introduced intent-to- use applications suggest that Congress intended the test of “bona fide” to be shown by “objective” evidence of “circumstances” showing “good faith.”

Intel had the initial burden to prove by a preponderance of the evidence that Emeny lacked a bona fide intent to use his mark in connection with the recited services. Intel focused on the fact that Emeny had no documentation to show his plans to use the mark. The Board found this complete absence of any clear, objective evidence to be sufficient for Intel to meet its burden that Emeny lacked the requisite bona fide intention to use the mark unless Emeny could provide an explanation as to why no such documents exist.

The Board found that the evidence in the case supported the conclusion that Emeny lacked the requisite bona fide intent. The application filed by Emeny (along with 8 others like it, which went abandoned) included “an unreasonably broad listing of goods and services.” The Board focused on the fact that there was no evidence of any business plans, nor any evidence of a single business contact with any potential partner who would supply the goods that Emeny would sell. Emeny did not divulge any business or marketing plans and admitted that he conducted no specific planning and never promoted or sold any goods under the mark. The Board concluded that he had no evidence of a bona fide intent to use the mark and upheld Intel’s opposition.

The important lesson for all trademark applicants is that when you file Section 1(b) intent-to-use trademark application, you had better have both a bona fide intent to use the mark for which you are filing as well as some kind of objective evidence documenting such bona fide intent.

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