No Bona Fide Intent to Use the Mark as of the Filing Fate of the Application



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  • Opposer has the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • "Opposer has the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods." Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008).
  • A determination of whether an applicant has a bona fide intention to use the mark in commerce is an objective determination based on all the circumstances.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • A determination of whether an applicant has a bona fide intention to use the mark in commerce is an objective determination based on all the circumstances. Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
  • Applicant's lack of documentary evidence may suffice to establish a prima facie case that applicant lacked the requisite bona fide intent to use the mark in commerce as of the application filing date.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • Applicant has admitted that aside from documents filed with the USPTO pertaining to his intent-to-use trademark application and documents pertaining to his registration of the domain names, applicant has no documents relating to his adoption of or intent to use the MITHRIL mark in commerce. (Bumb depo. at 77-78; RFP Nos. 1, 5, 7 and 9 (NOR Exh. 43).) Pursuant to the authorities discussed above, we find that applicant's lack of documentary evidence suffices to establish opposer's prima facie case that applicant lacked the requisite bona fide intent to use the mark in commerce as of the application filing date.
  • The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use implies that applicant did not have a bona fide intent to use the mark.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • Applicant presented no evidence at trial to support a contrary finding. See Research In Motion Ltd., supra, 92 USPQ2d at 1931 ("The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use convince us that applicant did not have a bona fide intent to use the mark.")
  • A party's mere assertions throughout this proceeding of his subjective intent to use the mark do not constitute objective evidence of such intent which would rebut opposer's prima facie showing of no bona fide intent.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • Applicant presented no testimony or other evidence at trial. Applicant's mere assertions throughout this proceeding of his subjective intent to use the mark do not constitute objective evidence of such intent which would rebut opposer's prima facie showing of no bona fide intent. See Lane Ltd., supra, 33 USPQ2d at 1355; Research In Motion Ltd. v. NBOR Corp., supra, 92 USPQ2d at 1931.
  • Evidence: Applicant's receipt of a cease and desist letter after the application filing date might have helped to explain a decision, made after the filing date, to cease development of a product line until after applicant's rights in the mark had been resolved. However, such a letter received after the application filing date, and applicant's asserted compliance therewith, does not help to establish that applicant had a bona fide intent to use the mark when he filed the application.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • Applicant's receipt of a cease and desist letter after the application filing date might have helped to explain a decision, made after the filing date, to cease development of a MITHRIL product line until after applicant's rights in the mark had been resolved. However, such a letter received after the application filing date, and applicant's asserted compliance therewith, does not help to establish that applicant had a bona fide intent to use the mark when he filed the application on September 12, 2001, which is the date at issue here. Cf. L.C. Licensing Inc. v. Berman, supra, 86 USPQ2d at 1892 ("Applicant's decision to forgo a business model until after the opposition is decided does not explain his failure to have any documents whatsoever at the time the application was filed that showed an intent to use the mark.").
  • The determination of whether applicant had the requisite bona fide intent to use the mark is to be based on objective evidence of such intent; and, applicant's mere statement of subjective intention, without more, would be insufficient to establish applicant's bona fide intention to use the mark in commerce.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • Because the determination of whether applicant had the requisite bona fide intent to use the mark is to be based on objective evidence of such intent, "...applicant's mere statement of subjective intention, without more, would be insufficient to establish applicant's bona fide intention to use the mark in commerce." Lane Ltd., supra, 33 USPQ2d at 1355. See also L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008).
  • Where the TTAB finds that applicant lacked a bona fide intention to use the mark in commerce at the time it filed the involved application, the TTAB may decline to make a determination on the merits on the ground of likelihood of confusion.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Because we have found that applicant lacked a bona fide intention to use the mark in commerce at the time it filed the involved application, we decline to make a determination on the merits on the ground of likelihood of confusion. See American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff'd unpublished, 17 USPQ2d 1726 (Fed. Cir. 1990).
  • Evidence bearing on bona fide intent is objective in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant's testimony as to its subjective state of mind.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Evidence bearing on bona fide intent "is "objective" in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant's testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer of applicant later testifying, "Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future." J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009).
  • Case Finding: Applicant lacked the requisite bona fide intention to use the MITHRIL mark in commerce when he filed his intent-to-use application to register that mark.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • For all of the reasons discussed above, we find that the preponderance of the evidence establishes that applicant lacked the requisite bona fide intention to use the MITHRIL mark in commerce when he filed his intent-to-use application to register that mark. Specifically, applicant has no documentary evidence to support his bona fide intent claim, a fact which suffices in itself to establish that applicant lacked a bona fide intention to use the mark when he filed his application. See Commodore Electronics Ltd., supra, 26 USPQ2d at 1507; Research In Motion Ltd., supra, 92 USPQ2d at 1931; and Boston Red Sox Baseball Club LP, supra, 88 USPQ2d at 1587.
  • Where applicant's CEO believed the mark to be a good mark for future use does not establish a bona fide intent to use.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Further, that Denny Jaeger, applicant's chief executive officer, believed BLACK MAIL to be a good mark for future use does not establish a bona fide intent to use.
  • Case Finding: The complete lack of documentation or testimony clearly outweighs any subjective or sworn intent to use the mark.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Here, the complete lack of documentation or testimony clearly outweighs any subjective or sworn intent to use the mark.
  • If opposer meets this initial burden of proof, the burden of production shifts to applicant to rebut the opposer's prima facie case by offering additional evidence concerning the factual circumstances bearing upon its intent to use its mark in commerce.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • If opposer meets this initial burden of proof, the burden of production shifts to applicant "...to rebut the opposer's prima facie case by offering additional evidence concerning the factual circumstances bearing upon its intent to use its mark in commerce." Commodore Electronics Ltd., supra, 26 USPQ2d at 1507 n.11.
  • If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation, since an inter partes proceeding can only be brought if the defendant has filed an application.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation, since an inter partes proceeding can only be brought if the defendant has filed an application.
  • A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • In pertinent part, the Trademark Act provides that "[a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register...." Trademark Act Section 1(b)(1), 15 U.S.C. §1051(b)(1).
  • Applicant's testimony, and the fact that applicant has no documentary evidence to support his claim of bona fide intent to use the mark as of the application filing date, establishes opposer's prima facie case of no bona fide intent.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • In short, we find that applicant's testimony, and the fact that applicant has no documentary evidence to support his claim of bona fide intent to use the mark as of the application filing date, establish opposer's prima facie case of no bona fide intent.
  • Examples of evidence to establish bona fide intent to use.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • In sum, applicant has no documentation to demonstrate that it had the requisite bona fide intent to use the mark BLACK MAIL in commerce when it filed the present application. As evidenced by its responses to discovery requests, applicant has no plans relating to use of the mark, no plans relating to trade channels or target customers, and no plans for expansion and growth of its product line to be sold under the mark. So as to be clear, the record is completely devoid of any evidence such as product design efforts, manufacturing efforts, graphic design efforts, test marketing, correspondence with prospective licenses, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like.
  • An amended drawing may not invalidate or otherwise affect a statutory allegation of a bona fide intent to use either the original or the amended mark as of the application filing date.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • In summary, opposer's filing of an amended drawing did not invalidate or otherwise affect its statutory allegation of a bona fide intent to use either the original or the amended mark as of the application filing date.
  • Applicant's mere statement that it intends to use the mark, and its denial that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Likewise, applicant's mere statement that it intends to use the mark, and its denial that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application.
  • One way in which an opposer can establish its prima facie case of no bona fide intent is by proving that applicant has no documentary evidence to support its allegation in the application of its claimed bona fide intent to use the mark in commerce as of the application filing date.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • One way in which an opposer can establish its prima facie case of no bona fide intent is by proving that applicant has no documentary evidence to support its allegation in the application of its claimed bona fide intent to use the mark in commerce as of the application filing date.
  • Case Finding: Opposer has met its burden of demonstrating applicant's lack of a bona fide intent to use the mark by showing that applicant has no documentary evidence regarding such intent.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Opposer has met its burden of demonstrating applicant's lack of a bona fide intent to use the mark by showing that applicant has no documentary evidence regarding such intent. Applicant indicated the following in its discovery responses: it has not offered any goods or services for sale under the involved mark (Interrogatory No. 1(a)); the mark has not been used and no plans have been made as to how the mark may be used (Nos. 1(b) and (d)); there is no projected date of first use in commerce (No. 1(c)); no channels of trade have been formulated or planned for the future (No. 2); the classes of consumers and geographic areas of sales have not yet been determined (Nos. 3(b) and (c), and No. 4); applicant has not undertaken any market studies, surveys, or focus groups (No. 14); and no documents exist regarding plans for expansion and growth of the product and service lines under the mark (No. 18). Generally, applicant indicated that there are no documents upon which applicant relied in answering the discovery requests (No. 28).
  • Opposer has the burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Opposer has the burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods.
  • Opposer having made out its prima facie case, the burden shifts to applicant to rebut that prima facie case by producing evidence which would establish that he had the requisite bona fide intent to use the mark when he filed his application.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • Opposer having made out its prima facie case, the burden shifts to applicant to rebut that prima facie case by producing evidence which would establish that he had the requisite bona fide intent to use the mark when he filed his application. See Commodore Electronics Ltd., supra, 26 USPQ2d at 1507.
  • To the extent that applicant alleges that opposer lacked a bona fide intent to use either the original or the amended mark, based on applicant's assertion that the amended mark was a material alteration, such an allegation does not form a statutory ground for cancellation. An examining attorney's acceptance of an amended drawing is an ex parte decision which necessarily involves a determination of whether the modified mark contains what is the essence of the original mark, and whether it creates essentially the same commercial impression.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • Similarly, to the extent that applicant alleges that opposer lacked a bona fide intent to use either the original or the amended mark, based on applicant's assertion that the amended mark was a material alteration, such an allegation does not form a statutory ground for cancellation. An examining attorney's acceptance of an amended drawing is an ex parte decision which necessarily involves a determination of whether the modified mark contains what is the essence of the original mark, and whether it creates essentially the same commercial impression.4 See 37 C.F.R. §2.72; TMEP §807.14 (6th ed. rev. 2009). FOOTNOTE 4 "The facts in this case are distinct from those in Century 21 Real Estate Corp., 10 USPQ2d at 2035, where the Board held that, while an examining attorney's ex parte determination of the sufficiency of the specimens cannot form the basis of a claim, "(T)he failure to make service mark use (as opposed to a failure of the specimens to show such use) is a proper ground for opposition." In the case before us, the counterclaim allegations center on the examining attorney's ex parte determination of the acceptability of an amended drawing, and this drawing issue does not also form an underlying basis for a separate statutory ground that would have precluded registrability."
  • The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof that is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof that is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). See also Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008); and L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008).
  • The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use convince us that applicant did not have a bona fide intent to use the mark.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use convince us that applicant did not have a bona fide intent to use the mark.
  • The requirement that an applicant must have a bona fide intent to use the mark in commerce must be read in conjunction with the revised definition of ‘use in commerce' in Section 45 to require that such use be in the ordinary course of trade, and not made merely to reserve a right in a mark.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • The Board also has stated that the requirement that an applicant must have a bona fide intent to use the mark in commerce "must be read in conjunction with the revised definition of ‘use in commerce' in Section 45 of the Trademark Act, which the Trademark Law Revision Act of 1988 amended to require that such use be ‘in the ordinary course of trade, and not made merely to reserve a right in a mark.'" Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).
  • Applicant's mere statement that it intends to use the mark, and its denial that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • "The Board has held that ""... applicant's mere statement that it intends to use the mark, and its denial that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application. Evidence bearing on bona fide intent 'is "objective" in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant's testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer of applicant later testifying, "Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future.""'"" Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1931 (TTAB 2009), quoting from J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009)."
  • The TTAB has held that the determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based on all the circumstances.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • The Board has held that "...the determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based on all the circumstances." Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
  • 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).
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • The Board has held: "... 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)." Commodore Electronics Ltd., supra, 26 USPQ2d at 1507. See also Boston Red Sox Baseball Club LP, supra, 88 USPQ2d at 1587 ("The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce."); Research In Motion Ltd., supra, 92 USPQ2d at 1931.
  • The fact that applicant filed multiple applications for the mark, or that there is correspondence between applicant and counsel regarding applicant's applications, hardly establishes a bona fide intent to use the mark.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The fact that applicant filed multiple applications for the mark, or that there is correspondence between applicant and counsel regarding applicant's applications, hardly establishes a bona fide intent to use the mark.
  • The filing of numerous intent-to-use applications to replace applications which have lapsed because no timely statement of use was filed is an example of activity which may cast doubt on the applicant's bona fide intent or even disprove it entirely.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The legislative history of the Trademark Law Revision Act discusses an applicant's bona fide intent and sets forth an illustrative list of circumstances that "may cast doubt on the bona fide nature of the intent or even disprove it entirely." The circumstances include the filing of numerous intent-to-use applications to replace applications which have lapsed because no timely statement of use was filed. S. Rep. No. 100-515, 100th Cong. 2d Sess. at 23-25 (1988).
  • Where the involved application is replacing two prior applications that were abandoned due to applicant's failure to file a statement of use, such events provide additional evidence bearing on applicant's lack of a bona fide intent to use the mark.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • This circumstance accurately describes the present situation where the involved application is replacing two prior applications that were abandoned due to applicant's failure to file a statement of use, and provides additional evidence bearing on applicant's lack of a bona fide intent to use the mark. FOOTNOTE 4 "So as to be clear, even if the present application constituted applicant's first attempt to register its mark, the record is devoid of any probative evidence to show applicant's bona fide intent to use the mark."
  • The submission of an amended drawing during examination is an amendment that need not be verified by a declaration under 37 C.F.R. §2.20, or otherwise, and such a submission does not, in itself, raise the issue of opposer's previous or continued bona fide intent to use the mark.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • To the extent that applicant seeks to assert a counterclaim based on the allegations that opposer's predecessor did not have a bona fide intent to use the mark as originally filed, or as amended, because such predecessor submitted a pre-examination amendment to the drawing between the filing of the original application and the filing of its declaration attesting to its bona fide intent to use the mark as of the application filing date, applicant's claim lacks a statutory basis. The submission of an amended drawing during examination is an amendment that need not be verified by a declaration under 37 C.F.R. §2.20, or otherwise, and such a submission does not, in itself, raise the issue of opposer's previous or continued bona fide intent to use the mark.
  • Trademark Act Section 1(b) states that a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may apply for registration of the mark.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Trademark Act Section 1(b), 15 U.S.C. §1051(b), states that "a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce" may apply for registration of the mark.
  • Lack of a bona fide intent to use the mark in commerce, may be established where applicant has not been engaged in the manufacture or sale of the goods under the claimed mark.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Turning next to the ground of lack of a bona fide intent to use the mark in commerce, we find opposer's allegations that applicant has not been engaged in the manufacture or sale of automobiles under the claimed mark or otherwise, and, therefore, applicant lacks a bona fide intent to use the mark in commerce, to state a sufficient claim. See Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662 n.5 (TTAB 2009) (finding no evidence of bona fide intent to use the mark "where there is no evidence that applicant is engaged in the manufacture or sale of automobiles under the claimed mark"); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (no bona fide intent found because no relevant business established).
  • Applicant's stated belief that the applied-for mark would be "a good mark for future use" does not establish a bona fide intent to use.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • We find that applicant's testimony, considered in its entirety, establishes that he had nothing more than a vague plan for, or conception of, how he would actually use the MITHRIL mark in commerce on jewelry, and that he filed his trademark application merely to reserve a right in the mark. Indeed, applicant's statements that he filed the trademark application "in lieu of something growing" and "just for the opportunity to create something in the future," essentially are his admissions that he filed the application merely to reserve a right in the mark. See Research In Motion Ltd., supra, 92 USPQ2d at 1931 (applicant's stated belief that the applied-for mark would be "a good mark for future use" does not establish a bona fide intent to use).
  • A determination of whether an applicant has a bona fide intention to use the mark in commerce is an objective determination based on all the circumstances.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • A determination of whether an applicant has a bona fide intention to use the mark in commerce is an objective determination based on all the circumstances. Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
  • Opposer has the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Opposer has the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods.
  • The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha Opposition, 26 USPQ2d 1503, 1507 (TTAB 1993).
  • If the mark comprises product packaging trade dress for goods or services, generally no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application until the applicant has submitted specimens with an amendment to allege use or a statement of use
    • In re Primo Water Corporation, Serial No. 78684820 (TTAB 2008)
      • Prior to applicant's responding to the first Office action, the Examining Attorney issued a second Office action in which she withdrew the refusal that the mark is a nondistinctive configuration.3 FOOTNOTE 3 "The Examining Attorney did not provide a reason for withdrawing this ground of refusal. Presumably she did so because the application is based on an intention to use the mark, rather than on actual use, and she believed that whether or not this ground of refusal was appropriate could not be adequately determined until applicant submitted specimens of use of its mark with the filing of an amendment to allege use or statement of use. See TMEP §1202.02(e) (If the mark comprises product packaging trade dress for goods or services, generally no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application until the applicant has submitted specimens with an amendment to allege use or a statement of use)."
  • Opposer having satisfied its initial burden of showing the absence of any documentary evidence regarding applicant's bona fide intention to use the mark, the burden shifts to applicant to come forward with evidence which would adequately explain or outweigh his failure to provide such documentary evidence.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Opposer having satisfied its initial burden of showing the absence of any documentary evidence regarding applicant's bona fide intention to use the mark, the burden shifts to applicant to come forward with evidence which would adequately explain or outweigh his failure to provide such documentary evidence. See, e.g., Commodore Electronics, supra.
  • Applicant's Internet searches and investigations conducted more than two years after the filing of his application and,after the notice of opposition was amended to assert a claim that applicant lacked a bona fide intent to use the mark, were not even remotely contemporaneous with the filing of the application.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Applicant has submitted no evidence, documentary or otherwise, to support or have a bearing on his claimed bona fide intention to use the mark when the application was filed. Applicant's Internet searches and investigations were not conducted until over two years after the filing of his application and, moreover, after the notice of opposition was amended to assert a claim that applicant lacked a bona fide intent to use the mark. Thus, they were not even remotely contemporaneous with the filing of the application.
  • The TTAB may not accord evidentiary value or consideration to unsupported factual statements made by a party in its brief.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Applicant's broad and general statements in his brief regarding his asserted marketing experience are not supported by any specific facts, or by any evidence. We can accord no evidentiary value or consideration to unsupported factual statements made by a party in its brief. See TBMP § 704.06(b) (2d ed. rev. 2004). See also Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1328 (TTAB 2007). Furthermore, applicant's claim, in effect, that an extensive and diverse range of nearly 150 items of clothing could be marketed "essentially overnight" and "with no forward planning" is simply not credible.
Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010) The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010) Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) Grand Total
Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009) 2
Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009) 1
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) 3
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) 2
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323 (TTAB 2007) 1
Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351 (TTAB 1994)  3
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) 3
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff'd unpub'd, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) 1
Grand Total 2 5 6 3 16
No Statutes Listed