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  • Applicant cannot be faulted for following the opinion of its counsel, especially in view of the settled principles that (1) mere prior knowledge of another's mark does not establish bad faith adoption and (2) the presumption of an exclusive right to use extends only so far as the goods or services listed in a registration.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In sum, however, we do not find this record supports, by a preponderance of the evidence, a conclusion of bad faith adoption. In this regard, we note that applicant's counsel gave applicant clearance to proceed with the filing of its Italian and U.S. applications. We do not believe that applicant can be faulted for following the opinion of its counsel, especially in view of the settled principles that (1) mere prior knowledge of another's mark does not establish bad faith adoption and (2) the presumption of an exclusive right to use extends only so far as the goods or services listed in a registration [and those within a registrant's natural scope of expansion]. See, in regard to the former, Sweats Fashions Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987) and, in regard to the latter, Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 199 USPQ 65 (2d Cir. 1978) cert. denied, 439 U.S. 1116, 200 USPQ 832 (1979). On the other hand, merely because we decline to find that applicant adopted its mark in bad faith, it does not follow from this record that applicant has acted entirely in good faith. While the factor does not weigh in the balance against applicant, it does not weigh in its favor either.
  • Conclusive evidence needed to establish bad faith adoption of a mark.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Finally, while we do not find in the record conclusive evidence of bad faith adoption of the NASDAQ mark by applicant, neither do we find clear evidence of innocent adoption devoid of intent to capitalize on a well-known term.
  • Case Finding: Applicant's credible explanation of its choice of marks was sufficient to overcome a claim of bad faith adoption of a mark because it knew of opposer's prior use of a similar mark.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007).
      • Finally, with respect to whether applicant adopted its marks in good faith, we note that applicant was aware of opposer's prior use of its HOG marks. However, we find credible applicant's explanation that it chose DIRT HAWG and WATER HAWG because of the association of the word HAWG with the University of Arkansas. Thus, we have not based our decision herein in any degree on opposer's contention that applicant chose its marks in an attempt to trade on the reputation of opposer's marks.
The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) Grand Total
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) 1
Mushroom Makers Inc. v. R.G. Barry Corp., 580 F.2d 44, 199 USPQ 65 (2d Cir. 1978) cert. denied, 439 U.S. 1116, 200 USPQ 832 (1979) 1
Grand Total 2 2
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